Is it Time To Amend 101?

section-gavel For IP attorneys and agents representing worthy patentees, the situation with “inventiveness” under 35 U.S.C. § 101, a concept introduced by the U.S. Supreme Court in its Triad of eligibility decisions of 2012-2014 — Myriad, Mayo and Alice, has become confusing and frustrating. The Federal Circuit continues trying to find the proper legal distance between absolute novelty and eligibility of a claimed invention, by applying a plethora of bewildering tests — asking whether additional claim limitations (i.e., in addition to a natural law, phenomenon or abstract idea) are “well-understood,” “routine,” “conventional,” “not markedly different,” “not inventive,” and other such bewildering terms. Superficially only, these formulations seem grounded in obviousness law. Yet, even if so, they are applied without nexus to the court’s own long history of obviousness jurisprudence on these topics.

Although it may be a difficult road in which to embark, in our recent paper in AIPLA QJ, “The Time Has Come to Amend 35 U.S.C. § 101,” we (Jorge Goldstein, Michelle Holoubek and Krish Thakker, of Sterne, Kessler, Goldstein & Fox P.L.L.C.), believe a campaign for legislative reform and clarification should start now.

We propose the following amendment to §101 (additions emphasized):

Whoever invents or discovers any new and useful invention, which is a physically implemented process, or machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor. While the claimed invention is subject to the conditions and requirements of other sections of this title, no further conditions than novelty and usefulness of the claimed invention as a whole are required under this Section.

At the outset, we describe the unworkable state of eligibility law and explain why the above amendment is necessary. We then explain why the proposed amendment makes § 101 workable again, and how it changes recent SCOTUS jurisprudence in the Triad without disrupting historically earlier jurisprudence on the judicially created Exceptions to eligibility (i.e. abstract ideas, laws of nature and natural phenomena). We further analyze the potential impact of confusing § 101 jurisprudence on the commercialization of U.S. innovation, and compare it to the situation in Europe, where the concept of eligibility is more relaxed than it is here. We evaluate the constitutionality of the proposal and provide a resolution for the issue of pre-emption based on other areas of the patent law, such as §§§ 102, 103 and/or 112. And, we conclude that the proposed amendment: (i) passes constitutional muster; (ii) places the state of patent eligibility back on a firm legal footing; and (iii) would alleviate encumbrances on major sectors of the U.S.’ inventing and investing community.

Rather than the drastic measure of abolishing § 101, such as that proposed by previous USPTO Director Kappos, we think that a simple change to § 101 that removes the confusing notion of “inventiveness” from statutory interpretation would do the trick. Our proposal strikes a middle ground, in that, while removing “inventiveness” concepts from § 101 analysis, it retains the historical exceptions rooted in pre-emption that were reiterated in the Triad.

Jorge Goldstein is a director at Sterne, Kessler, Goldstein & Fox P.L.L.C.. He is considered by his peers and clients to be one of the country’s pioneers in biotechnology patent law. He [...see more]

Michelle Holoubek is a director at Sterne, Kessler, Goldstein & Fox P.L.L.C. in the firm’s Electronics Group. With a background in relativistic physics, she specializes in software, digital healthcare, and optical technologies. [...see more]

Krishan Thakker is an associate at Sterne, Kessler, Goldstein & Fox P.L.L.C. in the firm’s Litigation Group and focuses his practice on general intellectual property enforcement and patent infringement, with a special [...see more]

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.

Join the Discussion

45 comments so far.

Anon
September 30, 2016 02:11 pm
There is a severe problem of “Ends justify the Means” and embracing the Supreme Court’s very evident (to those who know and appreciate the law) overstepping of its limited authority.

Sadly, the system of checks and balances is out of whack with a Congress far too enamored with stuffing their pockets with the “voices” of Big Corp Dollars (thank you very little, Citizens United) – [taking their own bread first] or else “playing the circus” with partisanship games that only serve the two parties.
Curious
September 30, 2016 01:32 pm
Justice Stevens is no lightweight. What did he have to say about “process” in the Bilski opinion?
Justice Stevens has been up in arms about patent trolls except that the issue of patents trolls has been raised before the Court. This a classic instance of a Justice overstepping the bounds of what a review court should be doing.

A process for training a dog, a series of dance steps, a method of shooting a basketball, maybe even words, stories, or songs if framed as the steps of typing letters or uttering sounds—all would be patent eligible. I am confident that the term “process” in §101 is not nearly so capacious
Confident except that it is nowhere in the statute.

The following is cited by the Court in Bilski and refers to statutory construction: “the Federal Circuit violated two principles of statutory interpretation: Courts “ ‘should not read into the patent laws limitations and conditions which the legislature has not expressed,’” BTW — this principle of statutory construction applies not just to patent law. However, this is precisely what SCOTUS has done.

But all the sophistry has only led to the current state of 101, which is roundly disliked. Y’all can bark at each other all day long, but until someone comes up with a way to separate the kinds of information innovations that can be patented and the kinds that can’t be, the mess will only deepen.
First, if there are to be kinds of information innovations that are patentable and some that are unpatentable, it is up to Congress to make that decision. That is a policy decision to be made by the legislature — not the courts. Second, the mess was created by SCOTUS, which read into 35 USC 101 limitations and conditions which Congress did not express.

As an aside, good policy making requires the policy maker to engage in fact finding. However, SCOTUS and the Federal Circuit are review courts — it isn’t up to them to make findings of fact. Instead, they are to review decisions of the lower courts.
Anon
September 29, 2016 05:21 pm
No deputy at all, Mr. Snyder – merely stating something for your benefit. Mr. Quinn solely runs this blog and the policing of the comments section. I merely inform you of what many of us who post here already know.

That fact that you have been banned once – and yet persist in defying the norms of conduct here does not take me by surprise.

Perhaps you would be better off all around if you paid attention to such norms (and rules, and laws, and the history of such laws, and the understanding of all of these). Or perhaps you wish to continue your path of fantasy.

Your call.

As for your erroneous Platonic model, please be aware that I have already previously addressed this misconception of yours. But, oh wait, actually learning and paying attention to what others try to teach you is somehow beneath you and your crusade (but, I have to chuckle, since “it’s only money,” right?)

And your choice of Stevens in Bilski could not be more of a proof that you do not appreciate the law. Stevens LOST his majority writing position in Bilski because his dissent dressed as a concurrence would have explicitly nullified the words of Congress pertaining to business methods, causing a direct and substantial Constitutional crisis.

And yes, when it came to mashing the nose of wax of 101 (something he himself warned against – but was perfectly willing to do for his own personal belief system), he WAS “just another rambling idiot.”

It is HIS type of sophistry that has led to the current debacle state of 101. YOU are the one “barking” up the wrong tree.
You Know Who I Am
September 29, 2016 04:46 pm
Interesting responses.

“Mr. Snyder, what you say continues to miss the truth. That may fly on other blogs, but you should be warned that misrepresenting what others have stated has a very short leash here on this forum”.

You a deputy around here now anon? Wish you had your own successful patent blog do you?

Gene, I use another name and proxy browser because you banned me once. You know who I am. If you think calling me an idiot is a good way to find common ground or improve the discourse; go ahead and call me an idiot.

As for my understanding of Constitutional law, true I’m not a lawyer, but I am an auto didact- so you won’t want to depend on what I may or may not know. Of importance, the line between law and politics is like the lines between the three branches; often overlapped. Go ahead and mewl that the legislature makes the laws and that the executive and judicial never constructively make law, or never should. It’s a Platonic ideal that can never be met.

Justice Stevens is no lightweight. What did he have to say about “process” in the Bilski opinion?

“The Court makes a more serious interpretive error. As briefly discussed in Part II, supra, the Court at points appears to reject the well-settled proposition that the term “process” in §101 is not a “‘process’ in the ordinary sense
of the word,” Flook, 437 U. S., at 588. Instead, the Court posits that the word “process” must be understood in light of its “ordinary, contemporary, common meaning,” ante, at 6 (internal quotation marks omitted). Although this is a
fine approach to statutory interpretation in general, it is a deeply flawed approach to a statute that relies on complex terms of art developed against a particular historical background. Indeed, the approach would render §101 almost comical. A process for training a dog, a series of dance steps, a method of shooting a basketball, maybe even words, stories, or songs if framed as the steps of typing letters or uttering sounds—all would be patent eligible. I am confident that the term “process” in §101 is not nearly so capacious.”

Just another rambling idiot no doubt.

But all the sophistry has only led to the current state of 101, which is roundly disliked. Y’all can bark at each other all day long, but until someone comes up with a way to separate the kinds of information innovations that can be patented and the kinds that can’t be, the mess will only deepen. It’s a political problem, so the people who prevail will likely do so via political means.

IOW, the idiots will inherit the Earth. Dig on that.
Anon
September 29, 2016 01:26 pm
Curious – dead on.
Anon
September 29, 2016 01:24 pm
Compare:

“overstates…it’s only money”

And

“unshakable resolve of someone radicalized by awareness of pervasive injustice.”

It must gall you that my views are so accurate.

As for “same old tactics of attacking the messenger instead of the message,” this too is false. I have “attacked” both, and when YOU make this such a personal crusade, AND you ignore the admonitions of learning and understanding the law, then both personal and message attacks are appropriate.

So let me repeat: your message is a fantasy untethered to any of patent law, the history of patent law, or an understanding of either. YOU are not doing anyone any good by ignoring the advice given to you and continuing your personal crusade.
Anon
September 29, 2016 12:43 pm
Gene,

I have to wonder why the fake email (I have long defended the ability to post under pseudonymous and anonymous monikers).

It is not like Mr. Snyder can hide his identity from the content – absolutely no one else tries so very hard to peddle THAT particular flavor of fantasy at the same time delighting in ignoring the law, the history of the law, or any critical understanding of each.

Mr. Snyder, what you say continues to miss the truth. That may fly on other blogs, but you should be warned that misrepresenting what others have stated has a very short leash here on this forum.

I have been very clear on the proper distinctions of what the judicial branch can (and should) do within a statutory law situation. To say that I advocate “NO” role is simply not only not correct, it is deceptive and an affront to the very type of critical thinking that I DO advocate.

Please stop aiming for erroronius sound bytes and take the time to follow the advice that I have given you.
Curious
September 29, 2016 12:38 pm
The same old tactics of attacking the messenger instead of the message
LOL — what “message”? You dislike information processing patents — we get that. However, as I pointed out already above, information processing (and information presenting) is inherent in many mechanical devices.

When you think about it, a mousetrap is an apparatus that involves information processing. Should that be unpatentable?

What you (and many others of your ilk) don’t understand is that computers and machines (a computer is just a machine) process information quite differently than how humans process information. The fact that a human can process the same information to achieve a certain result does not necessarily mean that a machine processes the same information in the same way to achieve the same result.

the rub of course is that “process” is an indefinite term that can be easily applied to clearly unpatentable activity
Indefinite? In what sense? A process is a series of one of more steps (let’s call them actions). It is very definite as to what a “process” entails. A process doesn’t claim structure — it claims action(s). While action involves structure, the structure per se is not being claimed.

The irony of someone sniffing about misunderstanding the law while insisting the judiciary has no role in creating law speaks for itself.
Go to law school. Take a Constitutional Law class. Think about the respective roles of the judiciary and the executive/legislative branches in our government. Once you’ve performed that exercise, you’ll (hopefully) have a better appreciation as to why we are (figuratively) up in arms about the Supreme Court’s rewriting of 35 USC 101.

I’ve made this observation before, and it is worth repeating. As someone with an engineering degree and working as an engineer (and a long-standing interest in science), I have frequently encountered very intelligent, but not science-trained people make some very ignorant statements about science. They just don’t know enough about both the basics and the nuances to make coherent and accurate statements about science-related topics.

I found the same to be true about the law after I went to law school. There are many intelligent, but not legal-trained people, who make statements about the law that are just poorly-grounded. It isn’t that these people are dumb. They just don’t understand both the basics and the nuances to understand why the comments they are making are completely uninformed.

Few people practice “Constitutional Law,” yet it is a required subject in law school (as far as I am aware). Personally, I really enjoyed Constitutional Law for many reasons. One of those is that it gave me a better understanding of the role of the judiciary in our government — what they can and cannot do. As such, when I read mainstream media’s accounts of various decisions by SCOTUS, I know that most of these accounts are wrong. They don’t appreciate what SCOTUS is reviewing, the standard used by SCOTUS during the review, and what is the actual impact of their decision.

Similarly, when I read your comments, I know that you don’t appreciate the limits placed on the judiciary. You just look at the end result and say “I like the result — SCOTUS must have got it right.”
Gene Quinn
September 29, 2016 11:59 am
You Know…

You say: “As to Gene’s comment, the rub of course is that “process” is an indefinite term that can be easily applied to clearly unpatentable activity.”

That is, of course, wrong. The term “process” is not indefinite. The term “process” has a specific definition. In fact, the term “process” is specifically defined in the statute. 35 U.S.C. 100(b) says: “The term “process” means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.” Furthermore, hundreds of thousands (if not millions) of processes have been patented in the U.S. That is a very large number of patents being issued without any indefiniteness, as you erroneously say the term interjects.

Simply said, the statute is clear. 35 U.S.C. 101 says if you claim a process it is patent eligible. Therefore, it is legally impossible for what is being claimed to be unpatentable, period. The fact that the Supreme Court created from whole cloth three judicial exceptions to 101, without any authority in the Constitution or Statute to do so, doesn’t change the what 101 actually says. It also doesn’t change the reality that the term “process” is well defined and not at all indefinite.

I know you know what you said is utter nonsense. Only a complete idiot would even suggest the term “process” is indefinite. So either you are a complete idiot (which seems entirely plausible) or you have an agenda and are too afraid to come out into the open (again, completely plausible). Of course, there is the third option that you are an idiot with an agenda, which frankly seems most plausible.

Hiding behind a fake name and fake e-mail creates mystery I suppose, which some might enjoy. I understand that this mystery saves you from tremendous embarrassment of your own stupidity, but I’m starting to grow tired of this mysterious game tied to ridiculously false statements. I fear you are just getting in the way of a meaningful discussion.

-Gene
You Know Who I Am
September 29, 2016 08:42 am
“Personal tragedy” overstates things somewhat; it’s only money.

The same old tactics of attacking the messenger instead of the message, erecting anti-patent strawman, and of course always setting forth new hoops to jump before a message may be valid for consideration on its own terms.

Fixed by flexible means the goal can be hit by political or judicial action- the goal is fixed but the means are not.

As to Gene’s comment, the rub of course is that “process” is an indefinite term that can be easily applied to clearly unpatentable activity. The bar may be low, but it’s not underground. We would not have this sustained controversy if things were so cut and dried.

The irony of someone sniffing about misunderstanding the law while insisting the judiciary has no role in creating law speaks for itself.
Anon
September 28, 2016 08:59 pm
Excellently put Gene.

We already have designated one particular branch of the government to write patent law, and it is not the judicial branch, whose scrivining has made a mess of 101.

Mr. Snyder’s “self-help” style of making things up that fit his own personal tragedy, and his abject refusal to learn about just why those who know law are upset with the Supreme Court for what they are doing to patent law, are not helpful to anyone (except apparently for Mr. Snyder, who may be finding some cathartic relief from his self-appointed “unshakable resolve of someone radicalized by awareness of pervasive injustice.”

Me? I would prefer someone who is level-headed, knowledgeable of patent law and the history of patent law and can employ critical thinking without accepting that the Supreme Court “can do no wrong.”
Gene Quinn
September 28, 2016 07:59 pm
You Know…

There are no doubt many who do not have a clue as to the appropriate boundaries for patentable subject matter. Chief among them would be the Supreme Court, most patent examiners in TC 3600 and many judges in between.

Of course, the statute is extraordinarily clear. If what is claimed is a new machine, process, manufacture or composition of matter it is supposed to be patentable subject matter and satisfy what was intended to be an extraordinarily low threshold. Too bad the Supreme Court cannot read and lives in the land of make believe where they have the authority to write law instead of interpret the law.

-Gene
Anon
September 28, 2016 07:14 pm
Mr. Snyder,

Your tautology of “fixed but flexible” is mired in your own personal emotions.

You are not “flexible.”
You are not “reasonable.”

While your resolve may be unshakable, that does not mean ANYTHING as to what “pervasive injustice” actually is mainly due to the fact that you have exemplified a willful ignorance of what justice actually means in patent law.

There is some truth to the fact that the current 101 jurisprudence is a mess; but this has more to do with the Supreme Court Justices – employing their own “I think” mechanisms – and NOT following the law as written by Congress.

Whatever you think that you are doing, is NOT helpful.

I would suggest instead that you learn the area of law called patent law, learn its actual history (and that actual history is not the “blind spot” you think is there), and then integrate that learning into whatever changes you would like to see and THEN – and only then – advance your proposed changes in view of what you have learned.

As of now, you are tilting at windmills without the most basic understanding of some rather important patent law concepts such as utility.

And lastly, “knowing who you are” is not a winning ploy for you. Your known baggage is easily seen in your rantings.
You Know Who I Am
September 28, 2016 06:03 pm
My company is not involved in any litigation at this time.

The policy basis springs from the abuse potential inherent in valuing infringement that varies from moment to moment due to the nature of information inventions. The policy basis springs from no parties having a clue as to the actual boundaries of patentable subject matter when it comes to information inventions. It comes from a historic blind spot in the history of patent law in not foreseeing valuable inventions that were intangible yet existing outside of a human mind.

As to my views being a personal fantasy or whatnot, I’m running a long term campaign with a fixed but flexible goal, a reasonable compromise ideology that respects the different mainline positions of stakeholders, and the unshakable resolve of someone radicalized by awareness of pervasive injustice. Laugh as you will, but I’ll be around, and you know who I am.
Curious
September 28, 2016 04:39 pm
Your views are nothing more than personal fantasy.
Bingo — we have a winner. Mr. Martin’s proposal is untethered from any policy basis other than ‘I’m getting sued on software-related patents, and I don’t like it.‘

How about you articulate a policy basis for your proposal that isn’t intrinsically tied to your personal benefit?
Anon
September 28, 2016 04:28 pm
You supply a value statement untethered to patent law or the history of patent law, Mr. Martin.

Your views are nothing more than personal fantasy.

Do not expect to be taken seriously if you cannot take this field of law seriously.
You Know Who I Am
September 28, 2016 03:21 pm
I am not free to discuss the litigation that forcefully brought the problems with patents to my attention. The docket is available online and the filings speak for themselves.

As to objections to my proposal:

“Any process that results in a human-detectable state-change (of anything) would be unpatentable” This is a strawman. A tangible state change is not information- its a chemical or mechanical change in the world. This language could only apply to pure information, unless anyone can think of anything else that is useful but intangible.

“Claim a speedometer on a vehicle as a process? Nope — not with this definition”.

That is a correct result. Claim your speedometer as a machine, manufacture, or composition of matter.

Claim a method of calculating (and displaying) time as a process? Not with this definition.

By all means, if the consumer of the time info is non-human. Otherwise, you need a machine, manufacture, or composition of matter.

Claim, as a process, a new way of displaying traffic signals (e.g., red, yellow, green)? Not with this definition.

And that social convention should not be a patent eligible method in the first place, although doing traffic control algos used by autonomous vehicles could be.

Gene, you don’t think people can “consume” information?
A Rational Person
September 27, 2016 08:44 pm
Curious@3

My proposed amended version of your amended version of 35 USC 101 (Hopefully the formatting comes out right). One of the issues I’ve tried to address is that your amendment treats “inventions” and “discoveries” as effectively the same thing, which is not the case. For example, how would one “discover” a man-made process?

By treating “invents” and “discovers” separately, I think it is possible to eliminate the need to add “man-made” and to clarify that an individual has never been able to patent a discovery per se, but only the application of a discovery.

“35 U.S.C. 101 Inventions patentable. [I]Without exception, w[/i][[w]]hoever invents [[or discovers]] any [[new and]] useful process, machine, manufacture, or composition of matter, or any [[new and]] useful improvement thereof[I], or makes a discovery and applies that discovery as a useful process, machine, manufacture, or composition of matter or any useful improvement thereof,[/I] may obtain a patent therefor, subject to the conditions and requirements of this title. [I]Meeting the requirements of this section is not a condition for patentability under section 282(b)(2)[/I]”
Anon
September 27, 2016 12:46 pm
Separating the mind from the physical really is unnecessary for protecting things “totally” in the mind.

What you see with the attempted “rebirth” (tragically getting things wrong) with the doctrine is the attempt to make all mechanical/electrical/non-human brain proxies as if those proxies were the actual human mind.

This of course is ridiculous and quite against the meaning of having patents in the first place (not to mention that this goes directly against the word of Congress for the statutory categories of Machine and Manufacture – or the implementation/execution of such that falls into the statutory category of Process).

But you are correct in the “mystification” efforts of those with a philosophical mindset against software. There simply is nothing “Abstract” about actual software or actual computers configured with software. It is only through the “magic” of “directed to” and the Gisting away of actual claim elements, is this modern day “sorcery” entertained. For those of us who began our professional lives grounded in science and engineering, this type of “voodoo” is (pardon the term) mind-boggling.
Curious
September 27, 2016 12:41 pm
That is why their definition in this post is garbage.
I wouldn’t call it “garbage” — misplaced, perhaps — but I’ll give credit to anybody who is looking to address the Courts going off the rail when it comes to 35 USC 101.

Their error is, as you put it, involves not recognizing that the human brain “physically” implements mental processes. As such, their language isn’t going to create the ‘line in the sand’ they are looking to draw.
Night Writer
September 27, 2016 12:00 pm
Anon @16. I basically agree with you. The answer is a mental steps doctrine.

But what is very wrong about their proposed definition of 101 is that it tries to separate the mind from the physical–wrong. Very wrong and medieval. We don’t need any more medieval thinking.

That is why their definition in this post is garbage.
Night Writer
September 27, 2016 11:16 am
Wow, @23 Anon that was an awesome and accurate summary. You forgot that he is the one that has repeatedly threatened to sue me for libel.
Anon
September 26, 2016 08:47 pm
Here is a hint: he owns a consulting firm and was all riled up because of a software patent that he was being charged with infringing and he thought it ridiculous because he had “invented the software” himself (but kept it out of the public), and thought that independent creation was “good enough.” Then he wanted to use 101 because “going with the facts or using 103” was going to be too expensive, and he, such the innocent, would be ruined for infringing a patent that he had never heard of and certainly did not directly take from that patent.

He also has shared that his knowledge of copyright law is just as abysmal, but claims that the fundamental difference (patents for utility and copyrights for expression) is not worth its salt.

In other words, M.S. would be correct.
Curious
September 26, 2016 08:08 pm
100(b) amended: A process which results in information consumed by human beings shall not be eligible for patenting.
The more I think about it, the worse this definition becomes.

Any process that results in a human-detectable state-change (of anything) would be unpatentable. This would probably encompass most mechanical processes. However, it wouldn’t prevent many types of software that operate “behind the scenes” that are imperceptible to humans.

“You Know Who I Am” is not Malcolm Mooney.
I’m pretty sure it is either MS or JM … I just don’t recall which one.
Anon
September 26, 2016 07:51 pm
Night Writer,

“You Know Who I Am” is not Malcolm Mooney.

It is a person previously “burned” in patent litigation and who has fabricated (quite literally) a complete “view” that has no tether whatsoever to the actual law or its history.

This person absolutely refuses to educate himself and instead has glommed onto ANY even minor endorsement as “proof” that he knows not only what the law is (he woefully does not), but what the law “should be” (again, woefully, he does not).

As Curious points out, he lacks a fundamental understanding of utility.
Curious
September 26, 2016 07:29 pm
100(b) amended: A process which results in information consumed by human beings shall not be eligible for patenting.
LOL

Claim a speedometer on a vehicle as a process? Nope — not with this definition.
Claim a method of calculating (and displaying) time as a process? Not with this definition.
Claim, as a process, a new way of displaying traffic signals (e.g., red, yellow, green)? Not with this definition.

Definitions like the one proposed above evidence a failure to appreciate that providing information to be consumed by people is not just limited to dreaded [/sarcasm off] software programs. Providing information to be consumed by people has incredible utility. Should a method directed to detecting whether an electrical wire is “live” not be patentable just because it provides information to a person?
Night Writer
September 26, 2016 05:56 pm
MM makes an appearance from the cesspool he inhabits.
Gene Quinn
September 26, 2016 04:31 pm
You know who I am-

That definition could work since it wouldn’t mean that software is patent ineligible since humans don’t eat software or eat information. Actually, now that I think about it, that definition would be fine since it wouldn’t change anything. It would, of course, add all kinds of unnecessary questions.

-Gene
You Know Who I Am
September 26, 2016 04:08 pm
100(b) amended: A process which results in information consumed by human beings shall not be eligible for patenting.
Anon
September 26, 2016 03:15 pm
Further, while I agree with you that thinking that the human mind is not physical is wrong, attempting to say that the mind is “just like a machine” is also wrong – not on a semantic level, mind you [pun intended], but on a legal level.

This does reflect (in part) the drawbacks that Curious mentions, but those drawbacks are not the entire picture.

The “cleanest” way to think of this is to understand the “mental steps doctrine” and what that doctrine truly means. Once that is achieved, then the suggestion I made concerning “pure” or TOTALLY in the mind can be seen as the best way down that path.

My suggestion for jurisdiction stripping does come in part because Congress already acted once to strip the Supreme Court of its meddlesome “Gisting,” and I believe simply that a stronger message is required. Taking them out of the loop prevents them from messing up patent law.

Curious does have a point about the CAFC being anti-patent (at least some members, and depending on the “luck of the draw” of a tribunal, you can still get screwed). But I handled that by having a new court created – one that has not been brow beaten by the Supreme Court.

Perhaps the best path forward is to combine my suggestion with that made by Curious.
Anon
September 26, 2016 03:07 pm
“not” = “note”
Anon
September 26, 2016 02:57 pm
Night Writer – please see my other comment.

(I did not that “physical” is not the best word)
Night Writer
September 26, 2016 02:31 pm
@8 Anon: Easy: one that exists only (solely, completely) in the mind.

Well, except, the mind is implemented with the brain and a process or method that a person implements is physically represented in their brain. The human body is the machine and the process in the brain is like the controller. It is really physical.

I point this out because not understanding this is part of the Stevens belief that the mind exists in the spirit world and is not physical. And saying it is not physical –the process in the mind–is wrong–very wrong.
Curious
September 26, 2016 02:09 pm
I don’t mind rewriting the definition of “process” to exclude processes that are solely performed in the mind. I think that making patentable this particular sub-set of the genus “process” creates too many problems.

However, I do believe that we shouldn’t exclude processes that involve partial human interaction.

I am open to how we get there — whatever the approach. For purposes of this exercise (i.e., how can the statute be amended), my focus is on how Congress can rewrite the law — not how the Courts should be interpreting the law.
Anon
September 26, 2016 01:44 pm
Curious,

Since with method claims, the “convayence” is not important (I am thinking of the mortar and pestle example of grinding something versus any other way of grinding something), and since no one (seriously) debates that in multi-step methods, mental steps ARE perfectly allowed**, I am not sure that the path of defining “method” would suffice. Except perhaps, (as I have already offered) defining a method as not including one which is TOTALLY in the mind (but you did not seem to like that idea).

**I will note again that much of the chicanery could be eliminated if the mental steps doctrine (or perhaps more accurately, what is left of the mental steps doctrine) were more clearly understood and the dissembling attempts to “reinvent” that doctrine so as to eliminate software were shoved into the sunlight and seen for what they are.
Curious
September 26, 2016 11:56 am
The issue of whether a pure “mental process” should be patentable is a good one to debate. While I believe there could be something that is a purely mental process that is worthy of being patentable, I think there are too many problems associated with patenting mental processes — e.g., how do establish prior art? how do establish infringement? Put differently, who is to say what is actually happening inside a human brain? Also, I’m not sure we want liability associated with just pure thought — no matter how inventive.

With this is mind, perhaps the way to keep mental processes from being patentable is to not monkey around with 35 USC 101 but the definition of “process” in 35 USC 100(b). What that definition would look like, however, I cannot say.
Anon
September 26, 2016 10:53 am
And yes, I do recognize the actual distinction of items happening in the mind really do happen in the physical universe, so perhaps we should choose a different word than “physically.”

How about we just use the pure “mental step,” and recognize that combination claims may be allowed to have some mental steps, as long as those are integrated into the claim, and the claim, as a whole, is more than just a pure “in the mind” item?
Anon
September 26, 2016 10:50 am
Night Writer,

Easy: one that exists only (solely, completely) in the mind.

Such easily takes care of any (patent-meaningful) concern with the actual concerns of the mental steps doctrine. Do you ever notice how that doctrine is never actually discussed in any meaningful manner, and yet most of the “software” “bogeymen” can be put to rest with a proper understanding of that doctrine?

Curious,

There are plenty of things I like – but I can see why you might think otherwise, given the current mess in patent law.
Night Writer
September 26, 2016 10:36 am
>>which is a physically implemented process

What is a non-physically implemented process?
Curious
September 26, 2016 10:20 am
I like it.
But you don’t ever like anything. 😉
Curious
September 26, 2016 10:19 am
I would instead propose an alternative route (and one that reflects the history of the Act of 1952): jurisdiction stripping.
You’ve proposed this route before, but that presumes that the new court with the final say in matter (e.g., the Federal Circuit or some new entity) will be better than the old court (i.e., SCOTUS). As it stands now, I think that the Federal Circuit is tending to be more patent-unfriendly than SCOTUS. Regardless, jurisdiction stripping does NOT prevent the new court from mucking up patent law — it just changes which court has the (dis)honor of doing so.
Anon
September 26, 2016 10:14 am
Curious,

I like it.
Curious
September 26, 2016 10:11 am
My proposal (I think I presented a similar version of a couple weeks/months ago).

“35 U.S.C. 101 Inventions patentable. Without exception, w[[w]]hoever invents or discovers any [[new]] man-made and useful process, machine, manufacture, or composition of matter, or any [[new]] man-made and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title. Meeting the requirements of this section is not a condition for patentability under section 282(b)(2)”

The “Without exception” portion is self-explanatory — it is a direct rebuke to SCOTUS for messing with the law.

I eliminated the “novel” aspect as it is redundant to the “subject to the conditions and requirements of this title.”

I added the “man-made” language to prevent people from patenting naturally-occurring processes/objects. Also, the “man-made” language dovetails into the “anything under the sun that is made by man.” The term “human-made” is also fine so as to be gender-neutral. Would the “man-made” language exclude inventions discovered by artificial intelligence? Not sure, but let’s cross that bridge when we get there.

The last addition removes 35 USC 101 as a defense.
Anon
September 25, 2016 09:59 am
…one more point:

The entity who has been authorized already by Congress to define precisely what the invention is (without the Court stripping elements away) can be emphasized as the inventor (in section 112).

The Court’s “fear” of clever scriviners should be rejected as any reason for the Court to rewrite the statutory law that is patent law. Such is simply not reason enough for the Court to violate the separation of powers. What the Court should have been doing is interpreting true to the words of Congress (or finding the words themselves to be unconstitutional), and NOT delving on individual patents that DO meet the words of Congress, but are nonetheless deemed “not acceptable” by the Court.

The Court has taken a decidedly wrong turn in its own application of power. Jurisdiction stripping is the more correct response to such a power overreach.
Anon
September 25, 2016 09:46 am
At first glance, I do not “buy” what you are selling.

First, you use the phrase “novelty under this section,” but novelty is only laid out in its meaning in a different section.

Second, you presume “utility” without more.

You aim to clarify, and I think that you have not achieved your aim. You may go on to explain this in your paper (with a proper disclaimer that I have not read the paper yet), but if you are amending the statute, then the words of the statute (and not your paper) need to be clear.

I would instead propose an alternative route (and one that reflects the history of the Act of 1952): jurisdiction stripping.

Patent appeals are not a matter of original jurisdiction for the Supreme Court. As such, they are fully amenable to the proper constitutional power that Congress has of jurisdiction stripping.

Since the original lower court set up by Congress ti bring clarity and order to patent law is beyond repair from repeated beatdowns of the Supreme Court, a new lower court should be created – one that does not fear the Supreme Court looking over their shoulders.

As long as there is a proper Article III court for patent cases, Marbury remains satisfied (read the case again – nowhere does it say that the power of review must be at the Supreme Court level – it merely says the power of review must be with the judicial branch).

What Congress could also do with their new Act is to be explicit that the Court has overstepped its authority and re-written the meaning (implicit and explicit) of the earlier statute, and the Act of Congress is repairing the law to as it should be understood.

Utility could be left as useful within the Useful Arts understanding.

Novelty could be left as being taken care of within 102.

NO further “scrivening” with “gist of the invention” or “meaning of the invention” by the Court is required, since 103 already replaced what the Court is attempting to do there.