Urge the Drafters of the New Section 101 to Support Inventor-Friendly Reform

By Mark Marrello
May 13, 2019

“It is beyond belief that the United States would cripple itself by limiting innovation in these crucial fields. Computer implemented inventions, biotechnology, medical innovations, and other critical fields must explicitly be protected and made patent eligible in the language of section 101.”

https://depositphotos.com/33125311/stock-photo-call-to-action.htmlSenators and Representatives Coons, Tillis, Collins, Johnson, and Stivers recently announced in a press release a proposed framework to fix patent eligibility law in the United States. If written as proposed in the draft framework, section 101 may do harm to the patent system. The senators and representatives are now soliciting feedback on the draft framework. They are likely to take additional action on the framework as soon as early this week.

Please send the following text with any of your edits to IntellectualProperty@tillis.senate.gov.

Honorable Senators and Representatives:

I would like to thank you for your initiative to resolve the 101 mayhem. Many concerns remain with your draft framework.

I applaud eliminating the terms “new and useful” from the current section 101, since “new” is covered in sections 102 and 103, and “useful” is irrelevant. However, I have the following concerns:

  • Concerning the categories of ineligible subject matter, the Supreme Court created incredible mayhem and caused enormous damage to the patent system by creating its categories of ineligible subject matter (i.e. “judicial exceptions”) and setting the fire. Codifying any categories of ineligible subject matter would reward the arsonist for setting the fire and provide additional fuel for the fire. Any rational person would think that to solve the 101 mayhem one would eliminate the categories of ineligible subject matter just like depriving the fire of fuel would extinguish it. I implore the senators and representatives to see this obvious logic, to not perpetuate the 101 mayhem, and to extinguish the fire.
  • Concerning the “practical application” test to ensure that the statutorily ineligible subject matter is construed narrowly, this is far from a viable line of defense for inventors in a world in which the courts have proven over at least a decade that they cannot be trusted with interpreting the patent law as written. The Supreme Court outright ignored the law as explicitly written and created its own law illegally when it created the “judicial exceptions” to patent eligibility. I wish we lived in a more perfect world, but given the courts’ long, definitively proven unwillingness and inability to interpret the patent law as written, the only rational solution is to eliminate the categories of ineligible subject matter altogether and not allow the courts the flexibility to make further damage to the patent system.
  • The concept of what a claim is “directed to” is far too vague and has been proven to be abused by the courts and many USPTO examiners in almost all cases of patent ineligibility. The concept of what a claim is “directed to” is a true disaster since anything can be said that it is directed to something else, and the courts and many USPTO examiners have used this concept to relate matters that do not have any relation. Therefore, it is critical to include in the language of section 101 that the courts and the USPTO must not use the concept of what a claim is “directed to,” but instead use what a claim “explicitly recites.”
  • Concerning the phrase “simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim,” this is perhaps the most dangerous and misleading part of the draft framework and it absolutely must not be included in the final section 101. The Supreme Court in Alice wrongly created this notion to apply only to well established business practices (see the Supreme Court opinion in, 134 S. Ct. 2347 2014). To compound the damage, circuit courts have extended this notion to computer implemented inventions (i.e. artificial intelligence, robotics, autonomous vehicles and devices, image processing, databases, computer/video games, computer simulations, content processing, and many more) that arise out of or are inherently implemented on a generic computer. It is unimaginably irrational to attempt to make computer implemented inventions that arise out of or are inherently implemented on a generic computer patent ineligible simply because they are implemented on a generic computer. Again, I wish we lived in a more perfect world, but the history has definitively proven that the courts cannot be trusted with interpreting this kind of language as written, therefore, the only rational solution is to eliminate this language altogether and not allow the courts the flexibility to cause further harm to the patent system.

    Many of the most sophisticated and novel inventions can run on generic computing hardware and do not need specialized computing hardware. For example, facial recognition, speech recognition, language processing, various artificial intelligence applications, sophisticated computer game functionalities, advanced image processing, sophisticated database functionalities, computer simulations, advanced content processing, and many more, do not require anything other than a personal computer, smartphone, or other generic computing hardware. If the proposed “generic computing” language is included in the final section 101, it will exclude many eligible areas of innovation and become a complete disaster. This is the simplest point of all: what computing hardware a computer implemented invention runs on has nothing to do with patent eligibility and, therefore, should be excluded from section 101.

  • Computer implemented inventions (i.e. artificial intelligence, robotics, autonomous vehicles and devices, image processing, databases, computer/video games, computer simulations, content processing, and many more), biotechnology, medical innovations, and others are fields of innovation critical in the global innovation economy and race for dominance in the world. It is beyond belief that the United States would cripple itself by limiting innovation in these crucial fields. Therefore, computer implemented inventions, biotechnology, medical innovations, and other critical fields must explicitly be protected and made patent eligible in the language of section 101.

You will notice that many of my points are driven by a genuine history-proven fear from the courts’ unwillingness and inability to interpret patent laws as written. Please ponder on this carefully as you cannot ignore the courts’ proven history. In the current attempt to reform section 101, you not only must include carefully written language as you would want it to be interpreted, but you must also account for the “courts’ damage factor,” because whatever language you think is well-written, the courts’ will interpret it in flawed or outright wrong ways. The proof is that there was nothing wrong with the current section 101—it worked fine for decades—until the Supreme Court created the illegal “judicial exceptions”.

Remember where China used to be relative to the United States in innovation ten years ago before Mayo, Alice, and the AIA came into being. China was not even on the radar as an innovation powerhouse. Today, after all the damage done by Mayo, Alice, and the America Invents Act (AIA), China is neck-in-neck with and even ahead of the United States in critical fields like artificial intelligence, biotechnology, medical innovation, and others. One who does not see the trend is blind or influenced by special interests. A partial so-called solution like the proposed draft framework will not reverse this trend or even slightly alter it. If you do not completely incentivize inventors like inventors were incentivized before Mayo, Alice, and the AIA, China will far outpace the United States in critical innovation fields in the next ten years beyond a point of return.

Gentlemen, you carry a great responsibility for ensuring a continued U.S. dominance in the world, which directly depends on the U.S. dominance in innovation. Indeed, you will be directly responsible if the United States falls behind other major powers because of the too limiting patent law, especially section 101. Just like the votes for or against NAFTA and other trade deals defined many politicians’ careers and precluded some from becoming presidents and cabinet members, your choices in the section 101 reform will shape your careers and legacies. You will be remembered as saviors or destroyers of U.S. innovation.

On an issue where the balance is so hard to find and given the enormous importance of section 101 reform for the future of the United States, I would strongly advise a section 101 that is flexible in favor of inventors. If you think about it, it is so much wiser to be at least a little more in favor of inventors than against them, as they are the very people who carry the torch of U.S. innovation. Many inventors have already given up on the U.S. patent system and have quit inventing. The remaining inventors will propel the United States forward or quit based on your reform of section 101.

 

The Author

Mark Marrello

Mark Marrello is a partner at Imperium Patent Works, LLP. While earning his M.S. and B.S. in Electrical Engineering, Mark worked at Qualcomm Incorporated as a Senior Radio Frequency Integrated Circuit Engineer. Mark’s responsibilities included the design, test, and production ramp up of cutting edge multi-mode and multi-band communication devices. After attaining his M.S. in Electrical Engineering, Mark transitioned to Qualcomm’s in-house legal department and began attending law school in the evening. Upon attaining his J.D., Mark became the second attorney at Bridgelux Incorporated where he singularly managed all intellectual property matters including building a broad patent and trademark portfolio, managing litigation issues, negotiating licensing agreements, drafting business and employee contracts, and advising the executive team on a variety of strategic initiatives. Mark is admitted to practice before the United States Patent & Trademark Office, all California State Courts, and the United States District Courts for the Northern and Southern Districts of California.

For more information or to contact Mark, please visit his Firm Profile Page.

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 27 Comments comments.

  1. Pro Say May 13, 2019 4:35 pm

    The best (and perhaps only) way to be sure we end this self-inflicted, American-innovation-killing eligibility morass is to abolish section 101 entirely.

    America doesn’t need it. Never has. Never will.

    Sections 102, 103, and 112 already take care of patentability. Just as they have for the last 50+ years.

    And I’ll repeat my comments from 4.17:

    We are at a patent and innovation crossroads in America.

    All of my fellow inventors, their counsel, their families, and their supporters:

    Now is the time — likely the last time we’ll have in our lifetimes — to stand up and be counted.

    This is still America. Still a country where the small can overcome the big. Where the relatively poor and broke can defeat the rich. Where right can overcome wrong.

    Yes; we can the beat the corporate behemoths that are stealing our inventions with impunity.

    If we stand as one.

    Here’s the e-mail I just sent. Please join me with your own e-mails, calls, and letters.

    The time is now.

    First, thank you all for working so hard to fix the mess that the Supreme Court has made of Section 101.

    As we all know only too well, 101 has been — and continues to be — a pox on American innovation.

    Every time the Patent Office, the Federal Courts, and even the Supreme Court denies and/or extinguishes a patent (and there have been untold 1,000’s of such denials and extinguishments in the last 7+ years), foreign governments and companies secretly and silently rejoice; because that technology is now free for the taking.

    Free for THEIR taking.

    We have, frankly, become a patent backwater; an innovation 3rd world country.

    The Chinese and the Europeans are eating our lunch and stealing our innovations left and right.

    My worries concerning the Draft Outline of Section 101 Reform are these:

    Re: • Define, in a closed list, exclusive categories of statutory subject matter which alone should not be eligible for patent protection. The sole list of exclusions might include the following categories, for example:

    1. But exactly what are “Fundamental scientific principles?” How are/would they be defined? Is it even possible to define such principles?

    Because, rest assured, if such definition(s) are left up to the Supreme Court, Federal Courts, and the Patent Office, we’ll soon be back to the mess we’re in today.

    2. But exactly what are “Economic or commercial principles?” As is the case with fundamental scientific principles, how are/would they be defined? Is it even possible to define such principles?

    Because, rest assured, if such definition(s) are left up to the Supreme Court, Federal Courts, and the Patent Office, we’ll soon be back to the mess we’re in today.

    Re: • Ensure that simply reciting generic technical language or generic functional language does not salvage an otherwise ineligible claim.

    3. But exactly what is “generic technical language” and “generic functional language?” How are/would they be defined? Is it even possible to define such terms? What does “generic” mean in the patent universe? What’s “technical” and what is not? What’s “functional” and what is not?

    Once again; if such definition(s) are left up to the Supreme Court, Federal Courts, and the Patent Office, we’ll soon be back to the mess we’re in today.

    Re: • Statutorily abrogate judicially created exceptions to patent eligible subject matter in favor of exclusive statutory categories of ineligible subject matter.

    4. Yes. It is critical that your legislation specifically and explicitly abrogate by name the cases which have caused so much of the problem; including but not necessarily limited to Alice and Mayo.

    Because, if you don’t, SCOTUS, the Federal Courts, and potentially the Patent Office will continue to rely in part or in whole on these precedental cases to block and cancel American innovation.

    Frankly, the only way to be sure that America doesn’t once again find itself in this untenable position is to eliminate Section 101 entirely.

    Sections 102, 103, 112, and the other requirements for patents have always done their job; done what Congress wanted.

    Let them return to doing the job they have for so long proved they’re capable to do.

    America doesn’t need 101.

    As an Independent Inventor, I stand ready to lend whatever assistance I can to get this Section 101 right for America.

    Please feel free to contact me if and as needed.

    Thank you again for your efforts,

    (name & contact information)

  2. Pro Say May 13, 2019 4:43 pm

    … and the 2nd best eligibility-morass solution after abolishing the unnecessary section 101 is this (courtesy of Sherry Knowles)?

    Simply recodify Section 101 with the following wording:

    “Whoever invents or applies a discovery which results in 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. Judicial exceptions to this statute are expressly prohibited, and instead, the Court is required to carry out strict statutory construction.”

    Confusion ended. Problem solved. Current and future American innovation preserved.

    An elegant, common sense solution indeed.

    A solution anyone and everyone who’s being intellectually honest can readily embrace.

  3. Anon May 13, 2019 5:23 pm

    I would counter here that “Useful”is explicitly NOT irrelevant.

    One misses the opportunity to reinforce that Useful is not limited to “technical,” but instead is directly relevant to ANY and ALL innovation that provides utility within the Useful Arts.

  4. Sin Liu May 13, 2019 6:55 pm

    Mark nice write up. We are seeing the new changes to America shifting from Capital driven economy to a Corporatocracy. I use to file for patents at the USPTO but I no longer do it because the 101/Alice/Ebay and PTAB have helped major corporations steal my inventions with out having to pay for any type of retribution or injunctions, they have drained me dry in the courts. I am one of the lucky ones though, I do have contacts in China and UK and will be filing for patents in these new locations moving forward.

    Its very well known that Alphabet Inc, Apple and Amazon have bought up government in the U.S. and killed off all rights for patent holders. Once upon a time an inventor was able to get a patent and find investors to help build an idea, well this is now urban legend.. I can no longer afford to expand my idea and find capital or even license out my idea in the new America. The gluttons specifically Silicon Valley’s top echelon like Apple, FB, Intel, Amazon helped kill off small inventors like myself… The AIA Act-PTAB 101 have been the death blow to us small inventors. I do not think the American government can shake its addiction to special interest donations that have drafted the new anti patent narrative. As the American door has closed on inventors the Europe and Asia’s doors are opening wide open, with many new great incentives. This is the new evolution inventors must adapt in order to keep our IP protected. Zaijan Meiguo

  5. anonymous May 13, 2019 7:26 pm

    The “A Patent Is Property Act” contains the best language I’ve seen for inventors, while also meeting the objectives set forth in the framework. Please send a copy to Congress to let them know it contains a reasonable re-write of 101, removing patent eligibility as an issue for any court once a patent issues, but preserving a reasonable test to be applied during examination.

    The “A Patent Is Property Act” can be downloaded here:
    https://drive.google.com/open?id=1oJI-kR72T2nYWQoJFGFrBMNjOAKdDUZq

  6. Dr. Feel Good May 13, 2019 8:17 pm

    Government is like the patient and the Special Interest Groups are like the family Doctor and Silicon Valley is like the Sackler family that pays your doctors to give you drugs to control the narrative.

    Government is addicted to money like people are now addicted to Opioids “Oxycontin”. You see The AIA Act-PTAB, E-Bay-Alice-Mayo-Oils Cases were not created to help patent inventors but to keep Silicon Valley from paying inventors for using their IPs. No coincidence Silicon Valley has seen record growth since 2011 the introduction of the patent killing Bill The AIA Act.

    Government is addicted to money and is not able to understand wright from wrong it seems like a Opioid addict. Silicon Valley is just like the Sackler family that owns the addictive drugs “money”. America does not care about right from wrong it only cares about money like a Opioid addict only cares about getting high.

    America has fallen off a cliff when it comes to its moral compass. When you have Banks that collect bonuses and are rewarded for collapsing the economy, or starting fake wars, getting its people addicted to drugs and killing off patents to serve the modern day bourgeoisie like Google and Apple. You have a country that no longer has any type of credibility. The laws America had served it well until it got addicted to money and allowed special interest groups carte blanche to wipe out the rules that made it great.

    When will people speak the truth? The addiction is to deep to remedy as its adversaries have learned the game and have punctured though its armor and fed it the Opioid its governement can no longer turn down:- the love of money-. IPs no longer have any value in America just like its laws have no meaning to the corporate elites. Google Apple nor Amazon will save you when you have killed off the new seeds of invention. Take another Opioid America the Sackler family and Sillicon Valley will do just fine with out you. As you are only 4.4% of the worlds population and China, Europe and Russia have learned from your mistakes. Money and special interest groups should never rule a nation but its people must always rule its own money and control and enforce equality for all. Maybe the next super power will get it right?

  7. Josh Malone May 14, 2019 12:47 am

    Here is an idea. The first person to discover a new apparatus or method gets exclusive rights to practice it. Clearly obvious improvements do not count. If it is a close call, let the USPTO decide – one time! It might be a new method for proposing marriage. Or a new method for swinging on a swing. Or a new solution to the traveling salesman problem. Or a new method to calculate Pi. Or a natural remedy for cancer. Let’s just out on a limb and give that individual exclusive rights, regardless of what the critics say. If it is stupid then it is harmless. If it is valuable then let’s reward them for their creativity and foresight. If they are mean and miserly then we can survive on old technology for a while. The inventor will probably give in and sell it. Let them get rich. The market will decide how valuable it is. That is my idea.

  8. Benny May 14, 2019 5:27 am

    Josh,
    “…Or a new method to calculate Pi” Not patent eligible and everyone here understands why.
    “let the USPTO decide…” I’d be happy to, if I could trust them, but they have got it wrong so many times…
    “Or a natural remedy for cancer…” Questionable, because of the word “natural”, which would also make it unenforceable, and also could not be patented in other jurisdictions.
    “If it is stupid then it is harmless…” Not on the planet I was born on. Stupid is often dangerous. I wouldn’t risk it.

  9. Pence May 14, 2019 5:39 am

    @ josh that system you talk about does not make the rich richer, when you have over $500 Billion in cash like Apple does you buy up the game and steal for free. Can’t beat free when it makes you Billions and all you have to do is spend a few hundred million to lobby government to help make the rules work for you.

  10. Night Writer May 14, 2019 7:53 am

    @5 Josh Malone

    What you wrote is not your idea, but the foundation of how the patent system is supposed to work.

  11. Night Writer May 14, 2019 8:53 am

    @6 Benny

    >>“…Or a new method to calculate Pi” Not patent eligible and everyone here understands why.

    Benny, the opposite is true. Everyone that understands patent law and technology knows that a new method to calculate Pi is exactly the sort of thing that should be patent eligible.

    A machine that takes time, energy, and space to transform information. A person invents a new way for the machine to run that is faster and performs its function with less time, energy, and space, and Benny says it is not patent eligible.

    No person that understands technology would support Benny. Not one.

    What you have Benny is bizarro reasons that are not logically consistent. Your position is why we have such a tangled web in 101 case law.

    (And everyone should notice that if Benny responds to me that he will just skip over the physical reality that processing information is a physical process. He will probably make some allusion to mental processing occuring in the ether.)

  12. Jimmy May 14, 2019 11:07 am

    @Josh

    Did you just come up with a new, useful, or improved business method and system for granting a person a patent…..

    If I were you, I’d look into patenting that process….. in another country…. 🙂

  13. Ternary May 14, 2019 11:11 am

    The use of mathematical expressions in claims (but not in the specification) almost automatically triggers a 101 rejection and offers significant opportunities for post-issuance invalidation. This is not consistent with the way how technology and science are taught and practiced, where mathematics is the language of science. In patent claims, math expressions get this super metaphysical status. Mathematical expressions are as metaphysical as natural language.

    Mathematical expressions in claims of computer implemented inventions should expressly be patent eligible, unless no practical application is claimed.

    Any novel numerical computer implemented operation that has a practical application claimed, should be patent eligible. The burden of proof that there is no practical application claimed should be on the USPTO or the Courts. Claiming only the method, like a new method to calculate pi, without a machine and without a practical application would be deemed to be patent ineligible.

    Benson would thus still be considered patent ineligible. However, an additional limitation, like: “receiving binary coded decimal signals from a keyboard” or “providing the binary representation of the signals to a calculating circuit” would make Benson patent eligible.

    My concern is not that almost all claims would be patent eligible. (“anything under the sun” I say) My concern is that the Supreme Court, like Benny, has this knee-jerk reaction to math (as in Benson and Flook) and will re-introduce the judicial exceptions, even after a new patent eligibility rule has become law.

    The example of “calculating pi” is probably far fetched. But there are sufficient beneficial improvements of numerical machine methods that should be patent eligible. Many get patented, but only after a useless 101 struggle with the Examiner/PTAB and the threat of a Court invalidation still being out there.

    I agree with Benny that I would not leave the decision to the USPTO.

  14. Josh Malone May 14, 2019 12:14 pm

    You people are construing my claimed idea to read on the Constitution! But the system of Jefferson and Madison had no utility according to the Supreme Court (per eBay and Oil States), so it was INVALID.

    Nevertheless, I hereby surrender all rights. Any society that wishes to promote progress in the useful arts may freely implement.

  15. Ternary May 14, 2019 3:33 pm

    To circumvent all this eligibility nonsense for computers, all practical machines or practical methods performed by a machine are patent eligible. Methods that have been performed in the past by hand, mentally, with paper and pencil may be rejected/invalid under 102 or 103. Practical is when it has a useful or beneficial outcome.

    I would love to have a patent eligibility clause as proposed by Sherry Knowles. But that is not going to happen. Opposition to anything that reeks of computers and “abstract ideas” is too great. Anti-patenters have found a fantastic tool in Alice. Even (semi) pro-patenters like Sen. Coons and Tillis have trouble addressing “abstract ideas” in a way that will not create significant push-back. It jumps off their framework paper.

    I believe that the “practical application” approach of Director Iancu is probably the best one and should be codified by Congress. It is also the closest to what the Founders believed a patent would do. It will stimulate/promote inventions that will benefit the economy and well-being of people.

    A non-expert person who is not deeply involved in patent eligibility probably agrees that “abstract ideas” have no place in patented inventions. That same person, however, will probably also agree that a “practical invention” should be patent eligible. That is simple common sense and the basic purpose of the patent system.

  16. Another Anon May 15, 2019 3:11 am

    What a mess. “Any” means “any” and everyone — even judges — knew it meant “any” for 50 years. Take it out of the Courts; delete Section 101. #Delete101

  17. Night Writer May 16, 2019 6:28 am

    Yes that is the other way to try to remove eligibility for things like methods for calculating Pi. An anti-patent judicial activist will claim that somehow this is pure math and not applied math. And the argument that all maths are metaphysical ports to G*d is used. That somehow the tools of science are all maths. This, of course, that can be understood pre-information processing machines. With information processing machines and modern theory of computation we know those arguments are rubbish.

    But the arguments persist.

  18. Benny May 16, 2019 8:37 am

    Night @9
    A method is not a machine. A computer program is not a computer. Mathematical equations are not patent eligible, in any jurisdiction, and never have been
    Josh didn’t advocate patenting a machine for calculating pi, he spoke of a method.

  19. Anon May 16, 2019 9:51 am

    Benny,

    It is interesting that in your reply to Night Writer, you sow the seeds of the destruction of your own other views that align with the Efficient Infringer mantras.

    A method is not a machine

    Absolutely correct. But please note that BOTH machines and methods are de facto statutory categories for patent eligibility.

    In other words, your statement appears to be a truism, and yet is meaningless in context of you trying to take anyone’s point here and conclude that THAT point leads to patent INeligibility.

    A computer program is not a computer

    Another truism to the exact same effect. While a computer program is NOT a computer, a computer program IS a machine component. Machine components (along any of the design choice of computing ‘wares (hardware, firmware, or software) are eminently an item of patent eligibility**

    Mathematical equations are note patent eligible, in any jurisdiction, and never have been

    Distinguish:
    math (what is apparently your desired point),
    applied math (i.e., engineering, for example, the USE OF the Arheneus equation), and
    MathS (the philosophy and – often – confusion of math and applied math).

    Further, your quip of “in any jurisdiction” is largely a non-sequitur to the point at hand.

    he spoke of a method

    OK. What exactly is your point in bringing up a different fully ‘eligible’ statutory patent eligible category? Do you think that stressing this difference somehow makes what Night Writer to be saying to be any less correct in and of itself?

  20. Benny May 17, 2019 12:46 pm

    Anon, as usual you completely miss the point. I’ll use short sentences to make easier for you. Josh suggests that a mathematical method should be patent eligible. I disagree. Night tells me that a machine for implementing a mathematical method is patent eligible. I tell Night that is irrelevant since Josh is discussing methods. Anon jumps in with an incoherent response.
    Anon, the law, as it stands in your country and mine, does not permit patenting of mathematical methods. We both live in free countries, you have every right to lobby for a change in the law in your country. Personally I disagree that the law is wrong on this point, but that’s just me. And the law.

  21. Anon May 17, 2019 2:13 pm

    Benny,

    I missed NO point.

    I suggest that you read again my reflections on YOUR direct statements to understand WHY your direct statements cannot stand (as you seem to think that they can).

    It is NOT a matter of YOU using short sentences to make anything easier for me, as the one missing things here is NOT me, but is you. That you do not (cannot?) consider that your view is in error is part and parcel of your larger (and ongoing) problem vis a vis your comments concerning patent law.

    My response is NOT incoherent. Again, that YOU may think it to be only shows your own lack of understanding.

    You use the phrase at least twice of “mathematical methods.”

    You want to accuse me of being incoherent, when you insist on BEING incoherent.

    What does “mathematical methods” mean?

    Does it mean applied math? (vis a vis Diehr)?

    I offer a path of wisdom to you (in the offering to distinguish between math, applied math, and MathS), but you are too busy wanting to be snarky and accusing me of incoherence to even realize that YOU are incoherent and that I offer a way for you to better yourself.

    You then not only assume that you are correct (you are not), but that the law is as you think it to be (it is not).

    Instead of worrying about lobbying to change the law, I suggest that you actually endeavor to understand the law. Once you reach that point then you may be able to understand just why the phrase “the scoreboard is broken” is used to describe the Judicial Branch version as opposed to how Congress actually wrote the law and why this is LESS about “lobbying” and MORE about understanding.

  22. Benny May 17, 2019 2:21 pm

    Anon,
    What does “mathematical methods” mean?
    Josh spoke of a new method for calculating pi. That’s what the discussion was about. You might have missed that.
    Also, with a bit of effort, you could inject more clarity in your prose. Remember, a blog is not a legal document. You would be doing all of us a favour if you adopted a more conversational tone.

  23. Anon May 17, 2019 6:07 pm

    I have missed nothing Benny.

    You did not answer my question, nor reflect on the distinctions that I provided.

    The “bit of effort” needs to come from you. While “conversational” may be nice, this IS a legal blog, and where you miss is often on basic legal concepts.

    Wanting “conversational” will often obscure rather than clarify the fact that terms of art must be understood in the context of the law.

  24. Ternary May 18, 2019 12:27 am

    Mathematical equations can be patent eligible, both in the USPTO and EPO. The EPO is better geared for that due to their very specific description of “computer implemented inventions.” An industrial utility is required. In the USPTO the use of mathematical equations act as a red flag in patent eligibility. They are not per se a reason for ineligibility. A “practical application” may overcome a 101 rejection.

    The example of calculating pi by Josh is understood, but a bit unfortunate. The constant pi is well known and is generally stored in memory for use. There are very few situations wherein pi has to be calculated. It would be doubtful that a new method of calculating pi will have immediate industrial or practical applications. But if it has, then its application may well be patent eligible and it should be.

    The original RSA patent in public key exchange (US 4,405,829) claims a “multiplicative inverse.” Which is not even a method but a property of a number. (It relates to a method of calculation, the Extended Euclidean Algorithm.)

    RSA is in essence a mathematical algorithm that is implemented on a computer. Why is it implemented on a computer? It uses a composite number (n=p*q, with p and q being prime) that is so large (100s of digits) that it can not be factorized by another computer.

    Cryptography and other engineering disciplines use math as the engine of their inventions. That is, it does not merely model a device, it uses mathematical expressions to come to a useful result. Electronic filters are an example of that, and advanced medical imaging techniques, for instance in image analysis, and display of medical images, depend on “mathematical methods.” Furthermore, computers are switching devices, and do not “calculate” in the sense that a human does.

    Mathematical expressions are the modern equivalent of “gears and levers” of mechanical times. Your side of the pond at the EPO has a better appreciation of that than here in the US.

    It would be good if the role of mathematics in present day inventions was better understood by the Courts here. But they didn’t in Benson and Flook and they repeated their misunderstanding of math and its role in advanced technology in Alice V. CLS Bank.

    I realize that the role of math in a machine is hard to grasp if you are not in that field. How can a calculating machine that merely evaluates mathematical expressions do something useful? But it does.

    This knee-jerk reaction about math being “abstract” is no longer of this time and demonstrates a fundamental misunderstanding of modern electronic/computer technology.

  25. Anon May 18, 2019 1:05 pm

    Ternary,

    I do not entirely agree – or disagree – with your post.

    That is to say, many things that you say are well said and explain well how patent law should be understood (especially to those lacking, either by effort or ability, an understanding of patent law).

    I would strengthen, yet differentiate your comment on the EPO’s version of the US utility requirement (which I believe is perhaps the best way of relating the “distinguish three math-related terms” avenue that I put to Benny.

    Your listing of the comparative law version that the EPO approach focuses on “industrial utility” is a fair alignment to the “practical application” notion that Director Iancu is banking on as a way for the Executive Branch to avoid the explicit contradictions created by the Judicial Branch Common Law law re-writing of 35 USC 101.

    I would augment your post and stress that the US Sovereign has a broader view of “utility” than the EPO does. Our Useful Arts notion is not limited to industrial utility.

    This is a similar distinction that has often been seen “on that other blog” concerning “technical.”

    As I view it, the different “sets” of “technical,” “industrial utility,” and “Useful Arts,” may be viewed as certainly having overlap, but are indeed distinct entities.

    The “easiest” of these may be considered “technical.” That is, anything (and I do mean literally anything) having to do with technology in use, backbone, development, or any other connection may be deemed “technical.” Playing a video game IS “technical.”

    In fact, one of the bones of contention that I have with people who want to think that the US eligibility question is only concerned with “technical” is that these people never seem to be able to provide a non-circular definition of “technical,” and often slink back to the parallel undefined USSC analog of “Abstract.”

    “Industrial Utility” tends to be just as easy – and hinges on whether or not the item in question may be used in industry (commerce). I do note here that the set for Industrial Utility and the set for “technical” are non-congruent sets. There are many things that find “industrial utility” that cannot be called “technical” and there well may be items that can be called “technical” that may not be classified as having “industrial utility.”

    Distinguishing from commerce (industrial utility) and being broader than that set (while perhaps having that set encompassed within it), the set of Useful Arts is the broadest aspect of the three sets. Pretty much anything NOT considered Fine Arts may be considered to be in the set of Useful Arts.

    There is an easy to understand and fundamental reason for this: the nature of innovation itself.

    Innovation is an item that is not — and cannot be — known a priori. We do not know its contours and we should not want to limit its contours. Current business models – things that speak to the set of industrial utility – do not (and cannot) capture all of the utility that innovation may present itself in. Certainly, “technical” may be seen as but a subset of Useful Arts (although I can see some view that items that may indeed be technical may not be within the Useful Arts: the ‘technical’ aspect of playing a musical instrument, for example).

    I would take your view of “Mathematical expressions are the modern equivalent of “gears and levers” of mechanical times.” and analogize this statement to be in the “applied math” of my three-math-related items to be distinguished in understanding patent law.

    I would further analogize the “practical application” aspect to distinguish mere “math” and “applied math.”

    “I claim a math equation” is just not the same as “I claim a method (using math) to do X.”

    A new method of computing PI (what poor Benny wants to over-focus on) may well be a method (using math) to do X.

    The method may – or may not – be “technical.”
    The method may – or may not – have an “industrial utility.”
    The method (presuming for the moment that “to do X” is at least implicit in the claim of the method) MOST LIKELY will have a utility within the Useful Arts. The method does NOT claim PI itself, and there are MANY actual uses of PI that clearly fall to (engineering – or applied math) and that can easily be seen to be within the Useful Arts.

    One of my bones with Benny is that he is perpetually wrong and misguided when it comes to patent law concepts. Perhaps this is merely his wanting to reflect things in “conversational tones,” or perhaps that desire for “conversational tones” carries a deeper problem of simply being disassociated with the context of law. But when it comes TO patent law, the legal context is clearly the necessary one, and for eligibility, the legal context of the US Sovereign choice to protect innovation is tied NOT to any set of “technical,” nor even tied to any set of “industrial utility,” but IS instead tied to utility within the Useful Arts.

  26. Ternary May 18, 2019 8:31 pm

    Anon,

    I am not sure that we actually have a disagreement in this. I don’t think so.

    I think I understand your distinction between the different Math classes and I largely agree with that. I would include another class, which would probably fall under your Applied Math class. That would be the class of Operational Math, which is mathematics that “does something.” Applied math already has the meaning as math applied in science/engineering problems. This distinguishes from pure mathematics, which may not have any application at all (for now). Applied math is commonly used in “modeling” of physical phenomena, which the Courts often call Natural Laws.

    Operational Math goes beyond Modeling and “does something.” For instance, calculating a multiplicative inverse by itself is a number theoretical operation. However, determining a multiplicative inverse and applying that inverse in a mathematical operation on a coded message to decode that message on a computer is both “useful” and has an “industrial application.” So suddenly a “pure” mathematical operation in the context of other operations becomes Operational Math or in your terms Applied Math.

    That matter is easily settled in the EPO (as far as I know, but I may be wrong). In the US the issue turns around the question if a claim that includes the “multiplicative inverse” is 1) directed to the abstract idea of applying a mathematical operation or 2) claims “something practical” or “something more.” I clearly go for 2). And so does Director Iancu, who made the RSA case an explicit example why math in certain cases is patent eligible.

    The RSA patent claims a “multiplicative inverse” in the sense that the “multiplicative inverse” is included or is part of the limitations. The RSA claims are not limited to only claiming the “multiplicative inverse” but require additional steps. In a follow-on patent, an inventor could actually claim novel ways to determine a multiplicative inverse, for instance in polynomial expressions. Under our current system, such claims will require utility, or “something more.” So, the claims have to include a limitation like “the multiplicative inverse, being applied in a cryptographic operation.” However, “being applied to” is considered also to be directed to an abstract idea and one would have to include something more specific like RSA or an Elliptic Curve Cryptography operation as an additional operation. In addition to that, one should probably explain that the new way of determining a “multiplicative inverse” improves the working of a computer. For instance, doing it faster. It all adds up to extra work that inventors in for instance mechanical arts do not have to do.

    Mathematics is originally part of the “liberal arts” I believe and not of the “useful arts.” That may be a legal argument for Originalists why mathematics is unacceptable in patent claims. The facts of life are that mathematical expressions executed on a processor nowadays are effective tools to realize a useful invention.

    For instance, Newton laws in essence are mathematical expressions that model natural phenomena or Natural Laws. However, in Kalman filters they are used to calculate and estimate future positions of an object and can be used to track an object by radar. In Kalman filters these expressions are now Operational Math. Inventions with Operational Math require evaluation of mathematical expressions by a processor. Without a processor, these inventions are inoperable. So by their nature, they are already tied to a machine or a technology.

    From a philosophical point of view I agree with you. But from a practical point of view, the EPO approach works better for me. What disappoints me, is that we need to have this discussion over and over again, as people keep objecting to math in claims. While people like you, Night Writer and others have a good grasp of the role of math in engineering, my concern is that even after “directed to an abstract idea” has been resolved, math in claims will remain an issue.

    One way to address that is to require that: mathematical expressions in claims are patent eligible, unless no practical application is claimed. Let the Examiner, or the Courts prove that no practical application is claimed, rather than the Inventor fruitlessly trying to convince an obstinate authority.

  27. Anon May 19, 2019 11:32 am

    Ah Ternary,

    I agree that we do tend to agree far more than we disagree. In fact, I would agree that “disagree” it probably too strong a word for even those items that we differentiate upon.

    Of all the minds that I interact with, yours is probably the one that understands the nuances of modern innovation the most, and hence, we do agree and where we differentiate, I would look at the interactions as more opportunities for sharpening my understanding rather than actually being in conflict.

    For example, while I do very much like your addition to my “math groups” with the notion of Operational Math, I would tend to place that within my category of Applied Math. I do grant that your view is more nuanced, and for that I am appreciative of your addition.

    At the same time, I would note that how you view a historical artifact of “math” more in line with Liberal Arts, I draw a few distinctions myself.

    First and perhaps foremost, Useful Arts and Liberal Arts are NOT mutually exclusive sets. Fine Arts is one of the Liberal Arts, but there too – the two sets are not congruent. Rather, I am of the view that Useful Arts may well include things, items, or notions that can be classified as Liberal Arts.

    Second, the type of math that may have been more formally included as a Liberal Art tends to be of either (and possibly both) of my sets of “math” (that is, pure math for math’s sake) and “MathS” (that is, the philosophy involved with both pure math and applied math).

    In this manner, we are having a bit of talking past one another in that our concepts are not quite on the same plane (even though – as you suggest – we agree far more than we disagree, and probably agree with each other on a bottom line basis most entirely).

    As to your harkening back to the EPO, I do “get” the point that you are providing. I still take issue in that type of comparative analysis though, as I posit that the US Sovereign choice is in fact different in both degree and in kind from the EPO (for the reasons I mentioned above). Additionally, I “get” your machine or technology “reasoning” on operational math, but this too is subsumed in my view regarding the US Sovereign choice being “more than” the EPO choice. For all of that, the EPO does appear to be more “honest” in that outside of a “per se” or “as such” filter, my version of Applied Math is easily recognized as the type of innovation to be protected by patents.

    I think that we would tend to agree that how the Supreme Court (in its own ham-fisted attempts to input its own policies into subject matter eligibility) have really “screwed the pooch” with its “Abstract” notion, and that practical applications (or “being applied to”) STILL may fall to the (undefined, but “I know it when I see it”) exclusions of the Court (or courts). This, of course, is partly reflected in my multi-prong counter-points to Night Writer as to the propriety of the Court acting as they have done. As that multi-prong counter position provides, I would concur with your view of “obstinate” and DO take issue with that obstinance.