Congress is Trying to Fix 101: To Do So, They Must Overrule Mayo

By Gene Quinn
March 7, 2019

“With Mayo, the Supreme Court has usurped Congressional authority over patentability…. If this were happening in a more mainstream, high-profile area that touched the daily lives of Americans, this would undoubtedly be viewed as a Constitutional crisis.”

https://depositphotos.com/209932054/stock-photo-notebook-helmet-traffic-cones-table.htmlThe state of patent eligibility in America is shocking. Between the passage of the 1952 Patent Act and 2012, when the U.S. Supreme Court decided Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), the patent eligibility threshold was an exceptionally low hurdle. The law and policy supporting a low patent eligibility threshold was simple: You cannot know where innovation will go and having a high or even intermediate threshold could cut new fields of innovation off before they are able to flourish simply because they were new and did not conveniently fit into preconceived categories. Of course, that is precisely what innovation is supposed to be: new.

The extremely high patent eligibility threshold mandated by the U.S. Supreme Court in Mayo is antithetical to the very purpose of the patent eligibility requirement enacted by Congress, and anathema to any common sense understanding of innovation and how innovation occurs, is funded and evolves. The fact that innovation defies characterization should not make it patent ineligible.

Congress Contemplates a Fix

A group of Senators and Representatives are currently considering a legislative fix to this patent eligibility debacle created by the Supreme Court and perpetuated by a Federal Circuit unwilling to define the contours of a sensible patent eligibility test. These talks, which are being held in closed-door roundtable format, will seek legislative language to introduce soon. It is anticipated that bills will be introduced in both the House and Senate sometime this summer. What those bills will look like seems to be genuinely up in the air—or perhaps it’s better to say open for discussion.

If the discussion should turn to the one thing Congress could do that would have the most impact, the answer would be clear. In order to have the most immediate, positive impact Congress must expressly overrule Mayo. The root of all the patent eligibility evil lies with that single Supreme Court decision.

Mayo Mischief

The real mischief of Mayo is found in the fact that the Supreme Court intentionally chose not to apply 35 U.S.C. 102 (novelty), 35 U.S.C. 103 (obviousness) and 35 U.S.C. 112 (description) to evaluate the patent claims at issue. The Solicitor General of the United States specifically argued that the Supreme Court should look to those other sections of the statute as the Court itself commanded be done in Diamond v. Diehr, 450 U.S. 175 (1981). For example. Justice Breyer, writing for a unanimous Supreme Court, refused what he called “the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under §101.”

Simply put, Justice Breyer and the entire Supreme Court were wrong, period. Section 101 is not the “better established inquiry,” as then Associate Justice William Rehnquist explained in Diehr, writing for the Supreme Court in that decision that considering novelty under Section 101 was wholly inappropriate. “It is inappropriate to dissect the claims into old and new elements and then to ignore the presence of the old elements in the analysis,” Rehnquist wrote. “This is particularly true in a process claim, because a new combination of steps in a process may be patentable even though all the constituents of the combination were well known and in common use before the combination was made.” Despite this admonition about dissecting claims into old and new elements, the Supreme Court’s ruling in Mayo requires precisely that from decision makers.

On the issue of novelty being considered under the rubric of a Section 101 analysis, Rehnquist wrote:

It has been urged that novelty is an appropriate consideration under § 101. Presumably, this argument results from the language in § 101 referring to any “new and useful” process, machine, etc. Section 101, however, is a general statement of the type of subject matter that is eligible for patent protection “subject to the conditions and requirements of this title.” Specific conditions for patentability follow, and § 102 covers in detail the conditions relating to novelty.

Considering what is new has been shoehorned into Section101 by the Supreme Court in Mayo because the Court in Mayo requires consideration of whether the claim being analyzed contains routine, well-established and/or conventional steps, for example. There is simply no other way to interpret this additional layer of consideration—hunting for something that is more than routine, well-established and/or conventional is precisely the domain of the novelty requirement embodied in Section102. That was one of the key holdings in Diehr, which the Supreme Court obviously overruled in Mayo even if they did not acknowledge or understand the consequence of their new test.

Today, thanks to Mayo, decision makers consider whether claims are new, nonobvious and even properly described all under a Section101 patent eligibility analysis, which makes the remainder of the patentability sections of the statute superfluous. Indeed, with Mayo, the Supreme Court has usurped Congressional authority over patentability; an authority that is explicitly granted to Congress in the Constitution itself. This usurpation of power is not only wreaking havoc on American innovation, but it has wrought havoc on the delicate balance of power between the Supreme Court and Congress. If this were happening in a more mainstream, high-profile area that touched the daily lives of Americans, this would undoubtedly be viewed as having created a Constitutional crisis.

Stuck at the Threshold

Worse, the decisions required by the Supreme Court as the result of Mayo are made without information or thoughtful consideration. Because the issue of patent eligibility is a threshold matter, determination about whether an innovation is patent eligible are made without applying a single piece of prior art, without considering priority dates or availability of references or when teachings were made public. It is a true mystery as to how an innovation could be considered to be patent ineligible because it contains only that which is conventional, well-established or routine, but yet no patent examiner or defendant is able to find prior art to question the validity of the claim under Sections102 or 103. If it is conventional, well-established or routine, surely there must be prior art? And if there is no prior art how could something be considered conventional, well-established or routine?

Worse still, Mayo also allows these decisions to be made without a claim interpretation. Black letter patent law—from the Supreme Court itself—requires the language of the patent claims, the entire written specification, and the prosecution history to be consulted prior to determining the meaning of a claim. Additionally, in litigation a district court judge may consider extrinsic evidence, including expert testimony. Yet, when it comes to patent eligibility determinations under Mayo, decision makers somehow know what a claim covers without a proper and complete claim interpretation.

At some point, whether Congress overrules Mayo expressly, the Supreme Court comes to its senses, or the Federal Circuit grows up and appropriately narrows the decision to its facts, Mayo will be no longer. The question is whether it will be a quick and clean death blow from Congress that sets the industry free and allows innovators to flourish, or whether it is a slow and languishing death over time that occurs only after America has completely forfeited new innovation industries. Whatever the case may be, we will eventually look back and shake our head at the tragedy of Mayo and wonder why it took so long for our leaders to do the right thing.

Image Source: Deposit Photos
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Copyright: limbi007 

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

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

Discuss this

There are currently 34 Comments comments.

  1. BP March 7, 2019 5:54 pm

    Excellent 101 Webinar/panel today. Certainly some district court judges desperately wanted a tool to rid their dockets of patent cases as a matter of law, without resort to time/resource consuming evidence/fact finding (why some disregard Berkheimer/Aatrix). To them, “we tread carefully in construing this exclusionary principle lest it swallow all of patent law” means “go for it”, as long as you leave a few crumbs of patent law on the table. The SCt knew that Mayo/Alice would be interpreted and applied broadly. Friends helping friends.

  2. Anon March 7, 2019 5:56 pm

    Gene states:

    which the Supreme Court obviously overruled in Mayo even if they did not acknowledge or understand the consequence of their new test.

    But let me remind your that NOT only was such “over ruling” NOT done, the decision called out Diehr as the case most on point and expressly noted that Diehr remains fully good law.

    The Court scrivened themselves into a Gordian Knot expressly because they based their decisions on the desired Ends of the day, and paid no heed to the Means to those Ends.

    The Supreme Court cases — in and of themselves — are a hot mess of contradictions.

  3. Anon March 7, 2019 6:08 pm

    Let me also point out that it is NOT a small matter that there is s difference between mere prior art (in either a 102 or 103 sense) and what it means for something to be conventional.

    To be conventional means that the item has received widespread adoption.

    This raises the bar (especially in the patent office where rules of evidence and the APA still control) that for a showing of conventionality, the normal tools of prior art of patents and even NPL do not suffice. Known (as in 102) or possibly known (as in 103) do not – and cannot – bridge the gap from known to being extensively adopted.

    As I noted in relation to the Berkheimer memorandum, this heightened legal requirement of showing evidence applies to BOTH individual elements AND any ordered combination of elements.

    My personal feeling is that the movement I started by inviting people to push back on every glib assertion of “conventionality” with the request for a full and proper evidentiary basis for the heightened state of conventionality is a significant factor in Director Iancu’s attempt to have off-ramps in the new protocol BEFORE the application of Berkheimer is called for.

    I will also point out (and remind) that the notion of taking official notice is NOT available for such a “state of the art determination,” and that this means that examiners are without any of their “standard tools” in their efforts to establish conventionality to the degree that the APA requires.

  4. B March 7, 2019 6:37 pm

    @ Gene “With Mayo, the Supreme Court has usurped Congressional authority over patentability…. If this were happening in a more mainstream, high-profile area that touched the daily lives of Americans, this would undoubtedly be viewed as a Constitutional crisis.”

    And what is Congress to do that they didn’t do in 1852? There’s no law that Congress can write that the SCOTUS can’t re-write from the bench

  5. Anon March 7, 2019 7:10 pm

    B,

    You are incorrect.

    I have put forth a notion many times now that resolves the exact point tha tyou posit as not being able to be resolved.

    Congress has a Constitutional authority to employ jurisdiction stripping to Article III courts — including the Supreme Court — of any non-original jurisdiction matters.

    Patent appeals are a non-original jurisdiction matter to the Supreme Court.

    Of course, in order to comply with Marbury, there still needs to be SOME Article III court of review. But go back and reread that case – nowhere there does the case dictate that the Article III court MUST BE the Supreme Court.

    This is also why I have postulated that Congress needs to RESET the CAFC into that new Article III court.

    And by reset, we intersect on the differences in level of “blame” that each of us would lay at the foot of the CAFC.

    We may agree to disagree on that topic, but I would emphasize my past psychological thought experiment of simian training with a firehose.

    You would blame those BEING firehosed, while I would blame those HOLDING the firehose.

    In either regard, a reset would “free” and create a new group of simians UNTAINTED by any past firehose training, and that group would be free and clear from the threat of being firehosed.

  6. Anon March 7, 2019 7:16 pm

    I will also take the opportunity to posit that the current Gordian Knot created by the Supreme Court NEED NOT be addressed by Congress at all – IF (and that’s a might big if), the Court recognizes (and has the humility to admit its past mistakes and direct hand in the muckery of the current state of 101) and pre-empts Congress by applying the Kavanaugh Scissors to cut their own created Gordian Knot and make their own re-writings of the words of Congress disappear.

    The first prong of the Kavanaugh Scissors WAS a 9-0 decision (Schein). The second prong of the Kavanaugh Scissors was only an exchange in oral arguments (and remains to be seen both if and to what level any of that prong is translated into a Court holding).

    Again, IF these things DO coalesce, the Court may create a path for itself to “save face” based on the new blood coming into the Court.

  7. The Time Is Now To Act March 7, 2019 9:21 pm

    B- I know, and you are right. And, it nauseates me. But, we are seeing the glimmer of strict construction coming from Kavanaugh as Anon has pointed out.

    But, what of the @#$@# broken SYSTEM!

    And, by the heavens, enough of waiting around for another ‘perfect case’ for the 3 bagger panel perspective du jour only to be followed by the inevitable cert!!

    Our lawmakers need to fess up, own up, and fix the patent system.

    This time around, the true experts must be with the lawmakers especially during discussion (as appears to be happening) drafting and all the way throughout fighting hard for Glacier clear language alongside passage of the law.

    The lawmakers must value the real inventor community and let them in!

    We have heard enough from the SV Troubadours serenading with their tales; feather in cap and all. The usual suspects do not belong in the halls of Congress this time around.

    Are the lawmakers within Congress the best hope here? I think Sen. Coons gets it. I do like that we have a wave of new lawmakers. This is the opportunity to do something real.

    I hold out hope amidst the flames. Wouldn’t it be something if we could get down to the right answer NOW.

  8. B March 7, 2019 11:32 pm

    anon “Congress has a Constitutional authority to employ jurisdiction stripping to Article III courts — including the Supreme Court — of any non-original jurisdiction matters.”

    Interesting. How does one sue for infringement? Also, are you willing to forgo judicial review of PTAB decisions?

  9. B March 7, 2019 11:34 pm

    @ Gene “Despite this admonition about dissecting claims into old and new elements, the Supreme Court’s ruling in Mayo requires precisely that from decision makers.”

    The Supreme Court does lack an amazing amount of self awareness

  10. B March 7, 2019 11:48 pm

    “B- I know, and you are right. And, it nauseates me. But, we are seeing the glimmer of strict construction coming from Kavanaugh as Anon has pointed out.”

    FYI, I recently cited Schein in a SCOTUS petition for cert., but there is a problem most don’t appreciate. Specifically, the courts are dishonest. They don’t care. If it’s a choice between owning up to a mistake by a judge/justice and shooting a small child in the head start digging the grave. Don’t ask for intellectual consistency either. This excellent article highlights the lack of intellectual consistency.

    There is one possible way out: The SCOTUS might blame the CAFC for their test on patent-eligibility as they did in Bilski. Specifically, the SCOTUS lambasted the CAFC’s “legal error” in using the machine-or-transformation test when the CAFC was merely following Benson.

  11. concerned March 8, 2019 5:33 am

    It is a true mystery as to how an innovation could be considered to be patent ineligible because it contains only that which is conventional, well-established or routine, but yet no patent examiner or defendant is able to find prior art to question the validity of the claim under Sections102 or 103. If it is conventional, well-established or routine, surely there must be prior art? And if there is no prior art how could something be considered conventional, well-established or routine?

    Choir Mr. Quinn. I have been asking the same question in my patent prosecution to no avail. And in the case of the problem my process solves, substantial financial harm has been occurring to households and the governments for decades because no solution had been found prior.

    Moreover, investors are reluctant to invest the millions to build the solution out currently without protection, especially in a political environment where the Inspector General freely writes that handed out contracts are suspect as to the manner they are awarded.

    Pass the Mayo as this scenario certainly does not cut the muster.

  12. Paul Cole March 8, 2019 5:58 am

    I am reminded on the subject of Mayo of my 2012 posting on this blog “The Wrong Rat” and the Titanic example at comment 12. On the whole, I think that the Titanic example is even more pertinent than I thought at the time.

    For example, in Athena, nobody knew that myasthenia gravis there was an autoantibody that could be reacted with iodinated MuSK and immunoprecipitated. That knowledge was not in the prior art and prior to the invention nobody would have carried out the claimed sequence of reactions. One of the problems in the Federal Circuit is treating the newly discovered natural law as if it were prior art when it is not.

  13. EG March 8, 2019 7:54 am

    ” Indeed, with Mayo, the Supreme Court has usurped Congressional authority over patentability; an authority that is explicitly granted to Congress in the Constitution itself.”

    Hey Gene,

    Absolutely correct. Our Judicial Mount Olympus lost the ability to make “invention” whatever they felt like in 1952 when the new patent statutes, including Section 101, were enacted by Congress. That they refuse to acknowledge that fact and do what they and especially Breyer did in Mayo makes me and many other patent attorneys utterly contemptuous of SCOTUS as being principled and doing anything other than exerting Judicial Fiat.

  14. Jason Lee March 8, 2019 8:21 am

    Great post Gene, thanks. I am a fan.

  15. Anon March 8, 2019 9:44 am

    B @ 8,

    Either you did not read all the way through, or you need to refresh your understanding on what jurisdiction stripping entails (the position that I have put forth maintains the holding of Marbury – as I have often noted – and only removes the Supreme Court itself from the picture.

    Further (since I am aware of your distaste for the CAFC), I have also included in my advocacy the need to replace wholesale the simians who have been firehosed BY the Supreme Court with a resetting of a new Article III patent court that may engage (unfettered) with the purpose of the original CAFC.

  16. American Cowboy March 8, 2019 10:41 am

    Two points:
    1. While Mayo is a stinker, so is Gottschalk v Benson, and we need to reverse it too.
    2. Where does Scotus supposedly get the authority to make rulings like Mayo and Benson? Does Scotus say that they are applying the Constitution when making Mayo-like rulings or some sort of “inherent” power of the court? If the latter, whatever happened to Constitutional vesting of ALL legislative authority in the Congress; does all not mean what most of us think it means?

    Scotus originated the non-obviousness standard and at one point or another said that it was Constitutionally mandated by the grant of authority to Congress to grant patents on “inventions,” because they thought that anything that was obvious did not meet the standard of an invention. Let’s be careful that they don’t feel backed into a corner and say that their Mayo nonsense comes from the Constitution so Congress is powerless to fight them.

  17. Jianqing Wu March 8, 2019 3:58 pm

    Mental steps doctrine = no research and invention for any cure involving exercise, mind regulation, human acts….

    Natural phenomenon = no studies directed to any of the nature-made cures (tens thousands of anti-cancer drugs).

    All cures must be one of cutting, burning and poisoning. So, drugs must be man-made, but they must clash with tens of thousands of gene-encoded proteins and metabolic compounds.… So, drugs are against evolution and against natural laws.

    Naturally, no disease can ever be cured; then label every chronic disease as incurable. Then, we see the cancer hoax and death spells of terminal diseases. This non-performing medicine is followed by every nation for its false scientific validity.

    Then, 30 millions of premature deaths in the world, and 70% chance of death from chronic disease for every person, the cancer panic for everyone, annual cancer screening as routine solutions, bankruptcy of medicare, national health disasters, etc.

    If those obsolete doctrines are overruled, cures to cancer and chronic diseases can be found and the incurable era will become history in five to ten years.

    Help take down this “medical geocentrism” now, and make politicians to know why they have no cure when they need.

  18. Anon March 8, 2019 4:50 pm

    AC,

    What legal notion are you thinking of when you state “applying the Constitution?”

    I ask because there is FAR too much laxity involved in discussions of patent law, the Supreme Court and the Constiution (and not just by non-attorneys).

    Often even attorneys will use a phrase that simply does not make sense from a Constitutional Law perspective, and I have to wonder if that person has a clue as to what they think that they mean with the words that they are using.

    There is only one single “Constitutional” item dealing with patents, and that Constitutional item was solely involved in the delegation of authority FOR making patent law to a specific branch of the government.

    Compare — for example — the second amendment preamble of “well regulated militia”….

  19. American Cowboy March 9, 2019 6:32 am

    Anon, you and I are on the same page when it comes to what the Constitution says about patents. My query has to do with the page those nine people wearing the robes are on.
    Are they saying that the Mayo gobbledygook is Constitutionally mandated, or their own personal preference, or some independent rulemaking authority that exists, well, just because they are a court.

  20. Joachim Martillo March 10, 2019 9:03 am

    I focused on Mayo in my response to new § 101-guidance from the USPTO.

    I got over with my fixation on Kant. I believe I am correct in how I think about epistemology and patent law, but I had a talk with a senior patent attorney that works at Irell & Manella and that has a PhD in philosophy. He felt that only attorneys, who were over 30 and had advanced degrees in philosophy, would understand the material while those under 30 did not have the attention span to study Kant.

    I briefly addressed Ariosa Diagnostics, Inc. v. Sequenom, Inc. because I don’t understand why a method of improving and refining (medical) information (for diagnosis) is patent-ineligible when a method of improving and refining a physical material is patent-eligible.

    Because I am a hardware engineer, software engineer, and 2nd tier mathematician as well as patent agent, I took a stab at explaining the idea of claiming structure in logic states of electronic circuits (as briefly as is possible for me). I may have to refine this concept more for those that have no background in logic design.

    More clarity is required with respect to praxis (well-understood, routine, conventional activity), for SCOTUS with the aid of the CAFC has surreptitiously introduced a new judicial exception without bothering to tell anyone.

  21. Joachim Martillo March 10, 2019 9:22 am

    test

  22. Anon March 10, 2019 11:24 am

    Joachim,

    As I note here: http://www.ipwatchdog.com/2019/03/05/a-plea-to-all-ip-stakeholders-support-director-iancus-101-guidance/

    The USPTO listing of replies appears to have stopped at February 13 – long before your March 8 input.

    I am looking forward to reading your input (and I am happy that you have found a more senior attorney to discuss the limitations of trying to put everything into a philosophical context – I “get” that THAT is a tool that you know and are comfortable with, but as I have oft mentioned, that tools does not always translate well).

  23. Anon March 10, 2019 12:28 pm

    Joachim,

    Your treatise does not get where it needs to go.

    May I suggest that you allow yourself a co-author, someone able to STOP going down the path of the philosopher as you over-indulge yet again with tools that YOU are comfortable with, and you do not construct a legal argument that can stand firm.

    It’s not that you are in error – it is that you loose the “story” that you are trying to tell because you want to inject too much support for the way that you want to tell the story.

    You have some really excellent material. Please continue its evolution.

  24. Joachim Martillo March 10, 2019 1:04 pm

    Anon@March 10, 2019 11:24 am,

    I have never been able to find a system in the USPTO’s posting of replies to requests for comments.

    I have sent a response early in the commenting period only to see it appear over a month after the period ended. I sent a response about a month after the comment period ended, and it appeared within a week after I sent it in.

    Here is the USPTO announcement of the end of the comment period.

    The USPTO is seeking public comment on all the issues addressed by the two guidance documents. Additionally, we invite the public to submit suggestions to address future guidance supplements as part of their comments. Please submit written comments on these issues to Eligibility2019@uspto.gov on or before March 8, 2019.

  25. Joachim Martillo March 10, 2019 1:20 pm

    Anon@March 8, 2019 4:50 pm

    I could envisage a Constitutional Amendment to put the US patent system on a stabiler foundation.

    (1) Rights conferred under Article I Section 8 Clause 8
    (a) constitute private property and
    (b) can only be terminated or limited by due process of law in a suit at common law;

    (2) the right of trial by jury shall be preserved;

    (3) no fact tried by a jury shall be otherwise re-examined in any court of the United States except according to the rules of the common law; and

    (4) the rights conferred shall not without just compensation be taken for public use, be terminated, or be limited.

    The last successful Constitutional Amendment spent 203 years in its ratification process.

  26. Anon March 10, 2019 6:18 pm

    Joachim,

    Your post at 23 appears to be aimed at my post (to American Cowboy) at 18.

    Your aim is off.

    I see how you want to provide a Constitutional Amendment with the view of augmenting/strengthening/eliminating-Court-edicts.

    There is a reason why the ability to have Constitutional Amendments was set with a heightened rigor. What you want — while all good in and of themselves — is NOT what the Constitutional Amendment process is for, and quite frankly, each and every item that you indicate may be accomplished with standard law setting processes that the Constitution already provides.

    No.

    Instead, my aim at post 18 was far different.

    My post at 18 was geared to the fact that there is far too much throwing around of “Constitution” and far too little appreciation of just what that document does (and provides).

    American Cowboy is certainly not the only person to bandy about the phrase: “let’s just make a Constitutional Amendment.”

    But since AC typically demonstrates a reasoned approach to things patent law, I wanted to see exactly what it was that he thought was currently deficient with the existing Constitution.

    Just as Night Writer was recently errant in his views of “Constitutional” (his attempted elevation of the Supreme Court having a holding bound to the Constitution rather than bound to the actual law (and not recognizing that the Constitution is an allocation of authority to WRITE the patent law upon which the Court may then – and only then – reflect with any of their holdings). I have a feeling that American Cowboy may be likewise amiss.

  27. Joachim Martillo March 11, 2019 4:23 am

    Anon@March 10, 2019 6:18 pm,

    Anything that can be legislated can be unlegislated.

    Likewise if a Constitutional amendment is added, another Constitutional amendment can cancel it.

    The amendment process is simply harder than the legislative process.

    I can certainly find philosophic & historical analysis of the foundation of the patent system.

    Today the patent system seems to foundering on legislative tinkering associated with the administrative state.

    The patent system seems to have worked reasonably well from 1836-1981. (Some might argue that the upper bound on the reasonably functioning patent system is 1995. I am aware that there many complaints during either period.)

    I surveyed the patent system over the period during which it seemed to function to find the minimal framework and assumptions that seem to have made it functional. I put my finding in (1)-(3). I added (4) in order to be explicit in the meaning of (1).

    I did not put an examination system into the proposed Amendment. From the standpoint of stabilizing a capitalist economy, a registration system might work just as well.

    I would recommend that claim ejectment and quiet claim proceedings be legislated for the federal district court, but because I know of no patent system that uses such proceedings, I cannot recommend that they be added in a Constitutional amendment.

    Because I have too many relatives that have grown rich from governmental corruption, I made sure that the amendment prevents administrative cancellation of a right secured under Article I Section 8 Clause 8. Administrative cancellation of a right conferred by the selfsame administrative agency is an invitation to corruption, which has already taken root at the USPTO. I recommend that a special counsel be appointed to oversee an investigation into corruption at the USPTO and that the USPTO host onsite FBI special agents that are also patent agents or patent lawyers to make sure

    1) that unlawful special “quality assurance” programs like SAWS and like Second Look are quickly identified and eliminated and

    2) that participants in such programs are quickly suspended pending administrative hearings for termination.

  28. Anon March 11, 2019 8:24 am

    Today the patent system seems to foundering on legislative tinkering associated with the administrative state.

    You have far more direct – and far more pernicious – forces at work than any legislative tinkering associated with the administrative state.

    The patent system seems to have worked reasonably well from 1836-1981.

    Not so at all – that time period has SEVERAL instances that mirror today’s “calamities” concerning patents and patent law. I am not certain why you would try to paint the picture as you do. You turn around and admit to awareness of many complaints, which undermines your first sentence, and I wonder if this is but a stray thought…

    You have lots of decent thoughts Joachim – but they are still largely unsettled and thus your messages come across muddled and not as effective as I am sure that you would like them to be.

  29. Joachim Martillo March 11, 2019 10:07 am

    Anon@March 11, 2019 8:24 am

    There are at least two definitions of “working reasonably.” Legal professionals tend to focus on accuracy of judgment.

    Economists tend to look at growth and stability. Social factors may be aspect of efficient markets.

    There is a consensus that the patent system was instrumental in the Technological Revolution (2nd Industrial Revolution), 19th & 20th century economic growth, and increasing social-economic-political inclusion in the US.

    The patent system seems to provide gentle resets in the economy to prevent over-accumulation of capital, which is an inherent problematic tendency of the capitalist system.

    Success from the economic standpoint is independent of success from the legal standpoint. In other words economic success of the patent system may be a clear observable phenomenon even when there is a legal crisis. (For this reason, I believe it might be possible to construct an economically effective patent system based in registration like copyright or like trademarks.)

    There is increasing evidence that the US patent system today is both legally chaotic and also economically ineffective — in other words the worst of both worlds.

    I am not sure that any comparable situation has occurred in the history of the US patent system.

  30. American Cowboy March 11, 2019 10:29 am

    Anon, in several of your posts you suggest that I am ascribing Constitutional significance to Scotus ramblings about subject matter eligibility, but that is not what I intended to do and do not think I did.

    Instead, my posting was more of a question to the esteemed brains who read here; namely, is Scotus saying that its ramblings are based upon the Constitution, and if not, on what are they based?

    Where does Scotus gets its authority for making its eligibility ramblings?

  31. Anon March 11, 2019 12:46 pm

    AC,

    Please pardon the second reference, as your post inbetween my two posts did not show up in my browser until very recently.

    My point then may be seen as an adjunct to your questions. For those that DO see some type of “Constitutional” tie (and that tie NEED be to the actual holding of a case); then where exactly IS that tie – what are the precise words being used AS the authority to back up the explicit holding.

    Note how I emphasize “actual,” “precise,” and “explicit.”

    I do so because to MAKE this an actual Constitutional argument, those items are required. Otherwise, all that you are doing is reflecting the truism that ALL law must be traceable back to the foundation of the Constitution in some manner (and clearly, not all questions put to law rise to the level of being Constitutional questions).

  32. Joachim Martillo March 11, 2019 1:15 pm

    American@Cowboy March 11, 2019 10:29 am

    The judicial (judicially recognized) exceptions represent judge-made law of the American common law system.

    I am somewhat surprised that the Justices of SCOTUS along with the Judges of the CAFC seem to have created a new judicial exception in the form of praxis but have not bothered to tell anyone.

    The Justices & Judges seem to be shy about explicitly stating that they are making law.

    Anon@March 11, 2019 8:24 am

    I wear several hats and sometimes switch from one hat to another in a single essay. I should probably be clearer in which role I am writing when I make a substantive comment.

  33. Anon March 11, 2019 4:32 pm

    Joachim,

    Your last post contains two points that should be contrasted (and contrasted sharply).

    1) The Justices & Judges seem to be shy about explicitly stating that they are making law.

    and

    2) represent judge-made law of the American common law system.

    The reason for this contrast is that there are legal limits as to the propriety of the Judicial Branch writing law – be that writing by way of Common Law law writing or otherwise.

    When our Constitution explicitly sets forth authority for law writing to be to a (single) particular branch, that means that such law writing by other branches is especially constrained.

    To be certain, a branch so designated MAY (upon its choice, and with clear limits set forth, among other requirements) share its authority – but even that shared authority cannot be so open-ended as to defeat the clear edict of the Constitution.

    It is absolutely imperative to keep in mind that all three branches of the government operate UNDER the Constitution, and not a single branch may operate ABOVE the Law of the Constitution.

    As you may have noticed, I have been a provider of ardent reminders that most all state attorney oaths are clear that an attorney’s first and foremost duty is NOT to one or another branch of the government (even IF it seems that attorneys carry some unholy allegiance to the Supreme Court), but instead our duty is to call out even (or in my view, especially) the Supreme Court when that branch goes astray.

  34. Joachim Martillo March 12, 2019 4:24 am

    The USPTO is posting more responses to the 2019 New Guidance on eligibility.

    They are very disappointing — mostly a form letter from bots & trolls.

    https://www.uspto.gov/patent/laws-and-regulations/comments-public/comments-2019-revised-subject-matter-eligibility