Draft Text of Proposed New Section 101 Reflects Patent Owner Input

By Eileen McDermott
May 22, 2019

“The Supreme Court should never have created its own exceptions to U.S. patent laws. It has taken far too long for Congress to finally correct these errors, but this draft bill would finally strengthen our patent system.” – Russell Slifer

A group of Senators and Representatives has just released the draft text of a bipartisan, bicameral proposal to reform Section 101 of the Patent Act.

Senators Thom Tillis (R-NC) and Chris Coons (D-DE), Chair and Ranking Member of the Senate Judiciary Subcommittee on Intellectual Property; Representative Doug Collins (R-GA-9), Ranking Member of the House Judiciary Committee; Hank Johnson (D-GA-4), Chairman of the House Judiciary Subcommittee on Intellectual Property and the Courts; and Steve Stivers (R-OH-15) sent the draft text via press release today. The stated goal of releasing the draft is to solicit feedback—there will be additional stakeholder feedback and Senate hearings, according to the press release.

Senate hearings on the topic will be held on June 4, 5 and 11 featuring three panels of five witnesses each, for a total of 45 witnesses over three days.

Key Changes

The draft text explicitly states that “the provisions of section 101 shall be construed in favor of eligibility.” It also includes the following provision:

No implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” shall be used to determine patent eligibility under section 101, and all cases establishing or interpreting those exceptions to eligibility are hereby abrogated.

The bill would also add a subsection (k) to Section 100 defining “useful” as “any invention or discovery that provides specific and practical utility in any field of technology through human intervention” and would replace subsection (f) of Section 112 with the following:

(f)            Functional Claim Elements — An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

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Immediate Reactions

IPWatchdog Founder and CEO Gene Quinn said that “the legislative language is good,” and noted that the proposed definition of “useful” seems to be intended “to explicitly overrule AMP v. Myriad and bring us back to Diamond v. Chakrabarty, which is outstanding. Even better are what Senators Tillis and Coons identify as ‘other statutory provisions’ that explicitly abrogate the much criticized judicial exceptions.”

Quinn added that his recent article expressing concern that big tech was dominating the legislative roundtable discussions behind the scenes “obviously, was incorrect. This fix, if enacted, would be exactly what the patent system needs and is extremely pro-innovator,” Quinn said.

Initial reactions on Twitter also seemed generally positive.

 

 

 

Sherry Knowles, who has been vocal in her view that the Supreme Court’s judicially-created exceptions to 101 are unconstitutional, was enthusiastic about the draft text:

I applaud the actions of Sens. Tillis and Coons and Reps. Collins, Johnson, and Stivers to take the lead to address the recent unconstitutional decisions issued by the U.S. Supreme Court in the area of patent eligibility. These decisions have run roughshod over our tripartite system of government, have ignored the sole power granted to Congress to create patent law and are currently having a devastating effect on the creation and protection of innovation in the United States. The United States has led the world in innovation, and must also be the leader in the legal framework for its protection.

I am in favor of the current draft text that was issued on May 22, 2019 by the Subcommittee. It is simple and reaffirms the statutory language that goes back to the first codification of the Patent Act in 1790, and which has been repeatedly recodified by Congress through the 1952 Patent Act. It is the law that motivated the great inventions of brilliant scientists. I am especially grateful that the Subcommittee is willing to take a strong stand to demand that no implicit or other judicially created exceptions to subject matter eligibility, including “abstract ideas,” “laws of nature,” or “natural phenomena,” may be used to determine patent eligibility under section 101, and that all cases establishing or interpreting those exceptions to eligibility are hereby abrogated. Well done.

Russell Slifer, former Deputy Director of the USPTO and Principal at Schwegman Lundberg & Woessner, applauded the draft, but said it has taken too long to get here.

“The Supreme Court should never have created its own exceptions to U.S. patent laws. It has taken far too long for Congress to finally correct these errors, but this draft bill would finally strengthen our patent system.

Patent eligibility was never intended to be the tool to determine the validity of a patent.  The Draft Bill should be welcomed by all inventors and innovators.  I hope that this Bill has support needed to be passed by Congress.”

Meredith Addy of AddyHart P.C. was especially encouraged that the list of exceptions included in the proposed framework released last month seems to have been eliminated. In an email sent to IPWatchdog she wrote:

“I am encouraged to see this draft bill separating the Section 101 eligibility determination from other statutory sections (such as Section 102) and specifying that it is determined based on the claimed invention as a whole.  This version also addresses my main concern with prior drafts by removing the statutory “list” of exceptions.  Such a list runs the risk, not only of being overbroad and potentially covering future innovations, but also of being amended as legislatures and technologies change.  Patent laws should not require amendment as science and technology progress.  Along those lines, the statutory abrogation of the “judicial exceptions” remains necessary if we want to finally get over the judicial hurdles now plaguing Section 101.”

Paul Morinville, Founder and former President of US Inventor, Inc., said that “some clarity is needed” but overall Congress is “on the right path”:

“This is a big step in the right direction for Congress. It eliminates judicially created exceptions to 101 completely.  Without that there was no hope of fixing the mess. Now, legislation can be crafted to restore a major problem in protecting tech inventions.  Some clarity is needed in what the definition of ‘through human intervention’ means in the definition of useful. This could be problematic in tech inventions in chips and software that require no human intervention.  But, at first blush, I am very happy that Congress is eliminating exceptions and is on the right path.”

John White of Soryn IP was slightly more skeptical than most. He said the draft is “a good start,” but in the end, the interpretation of the new 101 will turn on the legislative history:

“Will courts (SCOTUS and CAFC) buy into what the language says and means? I sure hope they do. But my level of certainty is low. We need to enshrine the Chakrabarty standard of “anything under the sun made by man”. Look for the hand of man–if present in any respect in the invention, it should be patent eligible. This would then include any discovery, any execution of an invention on a computer, etc. Whether it is novel, unobvious, and adequately disclosed is appropriate for other portions of the statute. We need to separate these queries, utterly. The courts struggle to do this—this should be stopped via this language. 101 should return to its narrow focus—this draft accomplishes that goal.

Here are excerpts from some of the Senators’ and Representatives’ statements from today’s press release:

Thom Tillis

Thom Tillis: “We believe this draft framework represents a true balance that will restore integrity, predictability and stability to our nation’s patent system, while also preventing the issuance of overly broad patents.”

Chris Coons

Chris Coons: “Strengthening our intellectual property laws to encourage and reward research and innovation is critical to our leadership in developing cutting-edge technologies and safeguarding our national security.”

 

Hank Johnson

Hank Johnson: “Section 101 of the Patent Act is foundational to the patent system, but recent court cases have upset what should be solid ground. The draft language released today represents an important step in the process, the result of extensive consultation with stakeholders from a wide range of industries and perspectives.”

Steve Stivers

Steve Stivers: “Every day in my home state of Ohio, leaders in the fields of biologics research and diagnostics invest their time to discover lifesaving cures. American startups in these and every industry revolutionize technology usage and have the opportunity to propel our society forward with innovative discoveries and products, but we must work to protect these innovators with the ability to secure a patent that rewards their risk and investment. This draft proposes crucial steps to reform our patent laws to better reflect the twenty-first century’s rapidly evolving scientific and technological advancements.”

Feedback on the draft text should be emailed to IntellectualProperty@tillis.senate.gov.

IPWatchdog will continue to follow these developments and will provide in-depth analysis as the draft evolves.

 

 

The Author

Eileen McDermott

Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at several publications and industry organizations. She has acted as editorial consultant for the International Trademark Association (INTA), chiefly overseeing the editorial process for the Association’s twice-monthly newsletter, the INTA Bulletin. Eileen has also served as a freelance editor for the World Intellectual Property Organization (WIPO); as senior consulting editor for the Intellectual Property Owners Association (IPO) from 2015 to 2017; as Managing Editor and Editor-in-Chief at INTA from 2013 to 2016; and was Americas Editor for Managing Intellectual Property magazine from 2007 to 2013.

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 46 Comments comments.

  1. Night Writer May 22, 2019 5:36 pm

    We all know that the SCOTUS made up the “abstract exception” as a means for SJ to invalidate claims of a patent.

    >The bill would also add a subsection (k) to Section 100 defining “useful” as “any >invention or discovery that provides specific and practical utility in any field of t
    >technology through human intervention”

    I would be a bit worried about how “technology” will be defined by the courts. I think this needs more definition otherwise the Scotus may use this provision to eliminate large areas of innovation. We could end up with the EPO eligibility requirements if this term isn’t further defined.

  2. JTS May 22, 2019 7:17 pm

    Thanks for the update. It would be nice to see an explicit presumption of eligibility for issued patents.

    Is it safe to say that Trump would sign such a bill if his PTO director recommended it, as seems likely?

  3. Pro Say May 22, 2019 9:11 pm

    This is wonderful news indeed for ALL American innovators and our country!

    Thank you Senators and Congressmen!

    My fellow inventors — we all need to quickly and strongly stand up together and lend our support to these critically important changes.

    Those loud knocking sounds you’re hearing are for real. They are the Silicon Valley billion-dollar companies banging and pounding on our Congressional leaders office doors trying to stop these changes.

    Theirs cannot — indeed must not — be the only voices our representatives hear.

    My e-mails, letters, and phone calls go out first thing tomorrow morning.

    If you value your own inventions — and the many 1,000’s of inventions to come in future years and decades (potentially including those of your own family), please join me.

    The time is now to stand up and be counted.

    Eileen — thanks for the quick reporting. Do you have a link to the press release itself?

  4. Anon May 22, 2019 11:11 pm

    Without defining “technical/technology” this is not good.

    Further, we all should reflect that we sacrifice the larger Useful Arts for this (undefined) ‘technical Arts.’

    Further still, we turn 112(f) into something that is not an option and invite mischief with this notion of “turtles all the way down” with:

    An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

    Will any “function” whatsoever be deemed its own element? How does one have a corresponding anything to something that is missing?

    Mayhap we just jump from the frying pan of current 101 to the fire of 112.

  5. PKZ May 23, 2019 12:23 am

    I agree with Night Writer on the definition of the word “technology.” If a debate on “technical” vs. “non-technical” takes ground in place of what is “abstract” ideas, it would be similarly disadvantageous.

    Dropping the term “of technology” doesn’t seem to be a problem.

    Also, in section 100 subsection (k), perhaps they didn’t intend to define “useful” to include, necessarily, “any invention or discovery,” since section 101 subsection (a) specifies “invents or discovers any useful …”

    The last paragraph of “Additional Legislative Provisions” is particularly good.

    Hopefully, this leads to something positive!

  6. Jason Lee May 23, 2019 7:37 am

    Not very optimistic I do not see how they will pass the new Bill with out Amazon, Apple, FB, and Google having final say.

    Patents have lost 80 to 90% of their value since 2011, for a patent holder to get paid today from a company like Apple is impossible one of the problems is the complete unavailability of injunctions. They are routine in Europe and Asia, and when an injunction is issued, after a party is proven in court to have infringed, the parties almost always immediately settle. In America, this doesn’t happen anymore.

    Smart investors are getting their patents patented in Germany and China, this is nothing more them political theater. I do not have any confidence in the American system and getting 101 right or getting patents fixed. Its been almost 10yrs since they passed the AIA Act and brought in the PTAB rules and Ebay, Alice, Mayo that finished off patent for over a decade. It will be very hard to reform 101 when it serve the Corporatocracy to which each and every person in the House and Senate collect from in order to stay in power.

    Not sure how many times you need to get pie in the face to know the joke is on you. Keep a very close eye on the watered down version of this new Bill, it will be nothing like what they are proposing, companies like Apple, Amazon and Google will make sure of it. To little to late IMO.

  7. Wishful thinking May 23, 2019 8:27 am

    What Silicon Valley says is what the House and Senate will do. NO chance there will be patent reform.

  8. Night Writer May 23, 2019 8:39 am

    “ An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

    What if a functional term is used and it is not defined in the specification? The way it is supposed to work is this “functional term” is supposed to be construed by one skilled in the art. If a claim term included a hinge and no disclosure of a hinge in the specification, would the claim then be invalid?

    The fact is that the phrase above is a known way of construing the claims and is considered to be very restrictive.

  9. Eileen McDermott May 23, 2019 8:39 am

    Here you go Pro Say: https://www.tillis.senate.gov/2019/5/sens-tillis-and-coons-and-reps-collins-johnson-and-stivers-release-draft-bill-text-to-reform-section-101-of-the-patent-act

  10. Benny May 23, 2019 9:11 am

    Jason @6,
    Only dumb Europeans settle after the infringement has been proven in court. Smart Europeans settle before the case goes to court. But then, nothing is public so you don’t know what is going on.
    Smart investors getting their patents in Germany? What about the rest of Europe? Of course, the EPO has it’s own version of 101 (EPC 52(2c)), and oppositions at the EPO are way cheaper than IPRs.

  11. TFCFM May 23, 2019 9:42 am

    It seems to me that even the dullest patent attorney could easily argue that “a (new) method of adding two numbers in the head of a person” fits within these parameters.

    Even though it’s as abstract an “abstract idea” as can be, it plainly involves the technology of improving human cognition.

    (If you think not, then alter the idea to “a (new) method of adding two numbers in the head of a person by thinking about how a computer would do it.”)

    (If still not convinced, then simplify the idea to “a (new, but the same method as previous examples) method of adding two numbers in a computer”).

    It is, of course, the legislature’s call whether they want to permit monopolization of fundamental concepts like these. It seems to me a bad idea (given the constitutionally-identified purpose of the patents clause) for all the same reasons set forth in the many decades of Supreme Court precedent on this very issue.

  12. Paul Cole May 23, 2019 9:49 am

    If this bill passes, the meaning of the word “process” will receive much judicial scrutiny.

  13. Concerned II May 23, 2019 10:58 am

    I too am glad to see mobilization in an effort to get us out of the weeds on this “101” mess.
    But I am concerned with the language “specific” and “human intervention” in the definition. The word “specific” shades too much into the domain of Section 112. And “human intervention” seems far too “question begging” and manipulatable via claim drafting to be an effective way to define”useful.”
    Better would be to just “abrogate” all this goofy case law about section 101 and say nothing further in the original statutory language, which was fine as originally written.
    Is it really necessary to redraft the statute to strip away all these hurtful layers of complexity added by well-intended, but seemingly unrestrainable judicial activism?

  14. NJ Thomas May 23, 2019 11:09 am

    While there is momentum in Congress considering the Alice legislation, they should also consider amending:

    35 U.S. Code § 283 to provide that the “exceptional circumstances” test shall be applied as the correct “principal of equity” (as the US courts for 200 years and the courts of equity in Britain for 350 years had done before eBay);

    35 U.S. Code § 261 to provide that patents “shall have the attributes of personal private property.”

    and

    28 U. S. C. §1400(b) to provide “venue shall be provided in accordance with the provisions of 28 U.S. Code §?1391.”

    These are simple amendments, and it’s better to point out to Congress while we have their attention how SCOTUS has made a sweeping assault on our patent system in addition to Alice.

    I believe it adds to our case that Alice is not just one instance, but there is a consistent pattern of weakening our patent system.

  15. J May 23, 2019 11:13 am

    No more new limitation or laws of nature/natural phenomena limitations: dibs on gravity, friction and the human.

  16. Anon May 23, 2019 11:39 am

    I see that TFCFM ventures forth again (albeit into a different topic), but carries with her (him?) tinges of some very similar anti-patent leanings.

    It seems to me that even the dullest patent attorney could easily argue that “a (new) method of adding two numbers in the head of a person” fits within these parameters.

    Really? What part of understanding utility seems immune to your “seeming?” Utility of something that exists solely in the mind is NOT utility within the Useful Arts.

    It is a point that even the dullest patent attorney — and even the dullest attorney who litigates patents, but is not a bona fide registered patent attorney — should understand as a basic notion.

    As to “it plainly involves the technology of improving human cognition, you seem to conflate any actual technology with human cognition itself (which is NOT a technology).

    As to “(If you think not, then alter the idea to “a (new) method of adding two numbers in the head of a person by thinking about how a computer would do it.”)” you show your ignorance of both human thought and computing. Computers do NOT “think” as humans think. Computers are not human (dare I bring up that rather famous word: anthropomorphication?). Even Director Iancu has spoken out against the (rather mindless) tendency to have some type of anti-progress in that thinking “mere automation” should not be protected (of course, there is zero actual grounds for this in the law written by Congress).

    It is, of course, the legislature’s call whether they want to permit monopolization of fundamental concepts like these.

    A blatant tell. You mouth the anti-patent mantra, when any real patent attorney would bristle at the inanity of the phrase being used. First, patents are not monopolies. Second, you only seem too willing to double down on several aspects of beating up on a strawman: the “pure thought’ angle (even without realizing it), and indulging in a “pure math” example – really, pure math of addition?

  17. Anon May 23, 2019 11:41 am

    Paul Cole @12,

    Do you mean beyond (or perhaps more accurately, in spite of) 35 USC 100(b)?

  18. Ternary May 23, 2019 11:45 am

    TFCFM, I share some of your concerns, but not for the reason that you mention: “to permit monopolization of fundamental concepts like these.” First of all, I would challenge you to design a new method to “add two numbers.” I am pretty sure you cannot do that. If you can, I would allow you to monopolize it for a limited time. Furthermore, adding numbers in machine logic (machine arithmetic) is a technology by itself that is and should be patent eligible.

    My concern is that SCOTUS immediately will follow your idea that these inventions are either “abstract ideas” or “fundamental knowledge” that are or should be a judicial exception.

    For instance, a new method or algorithm to determine a multiplicative inverse in a finite field GF(n=p^q) not using an Extended Euclidean Algorithm would then be patent eligible. It is useful, as it can be applied in machine cryptographic methods, and it can be done (though not efficiently and not in a practical manner) by the human mind with pencil and paper, but mainly for very small fields.

    The good news is that Benson under the proposal would be patent eligible. I personally have no objection to having novel algorithms being patent eligible. But I believe that it will invite a repeat of the whole “abstract idea” discussion. It may be beneficial for preventing trouble to tie mathematics and mathematical expressions to machine implementation for eligibility purposes. I hesitate to write this down, as it will create other problems. But ultimately it may create a more effective statutory barrier against Judicial law making. I assume that the Draft has been reviewed by legal experts who probably came up with similar objections. I am curious to learn how they think this will fare in the Courts.

    I must say that I am impressed by the change of tone in the Draft compared to the initial Framework. Very good work.

  19. Night Writer May 23, 2019 11:58 am

    TFCFM >Even though it’s as abstract an “abstract idea” as can be, it plainly involves the technology of improving human cognition.

    Why do people think it is OK to write thing like this. Can you please define “abstract” to us? Any definition of abstract I know outside of Alice would not include a method of adding two numbers performed by a human as long as it is specified as to how the numbers are added.

    Abstract does not mean what you are saying and you know it.

  20. PKZ May 23, 2019 12:31 pm

    Concerned II – that also seems like a good idea. The case law prior to the activism is well developed, and clear.

  21. ClauseEight May 23, 2019 12:40 pm

    @Concerned II

    I agree that it’s great to see progress in 101. However, I don’t think merely using the language as written is going to help us much in the era of computers. Previous standards worked before because we didn’t have software, which seems to live somewhere between a process and a structure. Unfortunately, we’ve been defining what an invention/discovery ISN’T instead of what an invention/discovery IS. This creates a lot of confusion, ambiguity, and uncertainty on the patent owner side. I am one of the ones supporting inclusion of the “human intervention” standard, since just having the term “practical application” or “practical utility” is a little ambiguous without a definition. And leaving off these terms entirely may lead to the patent eligibility of gravity and related natural discoveries which may not have prior art to invalidate under 103 (see the English decision Neilson for an example of this). If we clearly define the metes and bounds of an invention, the courts cannot misinterpret too much the intent of our constitutional exclusive rights (though they’ll probably try).

  22. Paul Cole May 23, 2019 2:46 pm

    @ Anon 17

    It is wrong to think that “process” has no pre-existing Supreme Court baggage. Is the claimed process transformative? Lots of opportunities for debate there.

  23. B May 23, 2019 4:52 pm

    @ J “No more new limitation or laws of nature/natural phenomena limitations: dibs on gravity, friction and the human.”

    Anticipated under s102. You must be a judge with a remark that bizarre and removed from reality.

    Is that you, Judge Taranto?

  24. B May 23, 2019 5:09 pm

    @ Paul Cole “If this bill passes, the meaning of the word “process” will receive much judicial scrutiny.”

    In fact, some dipsticks in black robes will certainly interpret the term as requiring an “inventive process.”

    BTW, Villena v. Iancu goes to conference on June 6th.

    https://www.supremecourt.gov/search.aspx?filename=/docket/docketfiles/html/public/18-1223.html

  25. Night Writer May 24, 2019 7:09 am

    “ An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

    I just want to emphasize how bad this is. Consider something as simple as a hinge. Let’s say you disclose one hinge in the specification and it has a type of attaching to the door and the mount in a typical fashion to the mount. You don’t think much about hinges as they are well known. You then claim a door attached to the wall as part of a bigger invention in functional terms of course as the hinge is not important and how can you possible claim all the known ways to attach a door to the mount without functional language. What can happen is that your attachment can then be limited to only the hinge you disclosed plus its equivalents and not —-not—all the different types of hinges and their equivalents that were known at the time of the filing of patent application.

    What the proposed language above would mean is that a patent application would have to mention all the different types of known hinges in order to get have the claim construed to cover all the known hinges at the time of the filing and their equivalents.

    The use of the proposed language makes me feel that this is not a legitimate attempt at reform and that SV has moles that have inserted language to burn the patent system down.

    Let me emphasize that this is a known problem with that interpretation and has been for 40 years.

    Also, note that the narrative about functional language is part of the anti-patent judicial activists arsenal. Functional language is used in all fields of technology and used to cover all known solutions. I have posted references to books used in engineering at MIT that explicitly say this and explicitly explain that functional language is necessary to describe engineering solutions because of all the known solutions to subproblems.

    Any judge on the CAFC that says different than what I wrote above should be impeached. I get the feeling this is not a legitimate effort for reform based on the proposed language above.

  26. Anon2 May 24, 2019 2:13 pm

    A Wish

    ***************

    Section 101:

    (a) A person may obtain a patent under this title, subject only to the conditions and requirements of sections X,Y,… Z, of this title.

    (b) Anything for which a person may obtain a patent under this title as stipulated in section 101(a) and as subject only to the conditions and requirements of sections X,Y,… Z, of this title, shall be deemed an “invention” under this title.

    **************

    All the rest would have to be included in the detail of the conditions and requirements (and definitions) of sections X, Y, … Z, which themselves would not refer to “invention” (to avoid circular reasoning and the problems described above). This would include sections crafted with care about: authorship, subject matter, novelty, non-obviousness, utility, etc. i.e. 102, 103, 112 etc. and would be tightly controlled by the strict wording of congress.

    Further sections could then refer to “invention” if and as needed.

    Here’s why:

    101 introduces the term “invents” (and by implication “invention”) without defining it.

    The section essentially says that a patent may be obtained, “subject to” conditions and requirements… by a person who “invents”. Arguably, the “invents” or “invention” are not ever defined, the conditions and requirements are for (more generally) the *obtaining* of a patent “therefor”, and not technically definitional of what “invent” (or “invention”) is.

    This means that logically, there may exist “inventions” which a person “invents” for which the person may not obtain a patent, due to those conditions and requirements,. Furthermore, since the conditions and requirements do not technically define “invention”, as such, there is great latitude for “judicial interpretation” of the very term “invents” in 101. This results is a semi-contradictory middle ground… where “invention” does not equate to obtaining a patent, and things meeting all the conditions and requirements nonetheless may be deemed things which are not “inventions”.

    Some would have WISHED the legislation to set out the conditions and requirements for what an invention IS, i.e. what “invents” means, and stipulate thereafter simply that patents may be obtained therefor. The Law of Excluded Middle would take care of the rest.

    As it turns out, the statute is written as it is, and even if the intention were to have the statute define what qualifies as an invention, the effect is that it leaves very much open to interpretation.

    IMHO any non-fixed reference to “invent” or “invention” should be removed from 101.

  27. Ternary May 24, 2019 6:02 pm

    That is an interesting catch NW. I skimmed over it, assuming it addressed the “means for” issue and because we are all obsessed with 101 issues. Wrong thing to do, of course.

    What if I claim “generating an image of a scene?” Do I need to disclose a camera? But how else do I generate an image? And does it include “staring arrays” and “scanning arrays”, CMOS sensors, CCD sensors, film cameras and what about lenses. Do I have to define lenses? And what about a lensless camera?

    This suggests that I should claim a large class of cameras, such as a smartphone camera. That does not teach anything about the details of a structure, but it does teach a “corresponding structure.” And what about a calculator, a processor, a computing device. The possibilities for rejections are endless.

    At least some clarification about claims with “… a specified function without the recital of structure, material, or acts in support thereof” is required and why this was put in 112. I would say that a camera, a computing device, a circuit and yes “an attachment” provide sufficient structure. But perhaps not.

    Why would “generating an image of a scene” invoke a 112 rejection and “generating an image of a scene with a camera” not. And how specific does the structure need to be?

    Good catch, NW.

  28. Anon May 24, 2019 9:02 pm

    Ternary,

    It gets worse – far worse – if one looks at how some pundits want to treat “element,” and parse claim phrases down to separate elements.

    This quickly becomes a Hydra of “turtles all the way down.”

  29. B May 25, 2019 7:11 pm

    @ Anon2 “Some would have WISHED the legislation to set out the conditions and requirements for what an invention IS, i.e. what “invents” means[.]”

    Judge Giles Rich actually set forth a detailed and meaningful description as to the bounds of the word “invents,” and clearly differentiated “invention” between a thing that is contrived by human ingenuity and some abstract threshold requirement under s101.

    The difference is so clear that only a Federal Circuit judge could screw it up.

  30. Pro Say May 26, 2019 10:34 am

    Regarding proposed Section 100(k):

    Proposed Section 100 (k) states:

    “The term “useful” means any invention or discovery that provides specific and practical utility in any field of technology through human intervention.”

    While its meaning and intent should be clear to the intellectual honest, I could see at least some courts (again) — and worst case the Supreme Court — judicially-twisting Congress’ intent and meaning such that some innovations for which patents were properly issued by the Patent Office are nevertheless later extinguished because such courts (or the patent death squad PTAB) don’t deem them “useful” under 100(k).

    For example:

    1. What does “specific” mean? And how “specific” must specific be in order to pass muster?

    2. What does “practical” mean? And how “practical” must practical be in order to pass muster?

    3. What is / are “technology” and “field of technology?” How is it / are they defined? Can they even be defined? What do they include – and exclude?

    Indeed, while having “technology / field of technology” in (k) would unquestionably help American innovations in fields including artificial intelligence, machine learning, computing, etc.; it’s easy to imagine some courts – including potentially the Supreme Court — interpreting such phraseology to exclude innovative fields including the life sciences (is/are this/they “technological?”, pharma (is/are this/they “technological?”), and live-saving fields including medical diagnostics (are such “technical?).

    4. What constitutes “human intervention?”

    While not having (k) at all may be the best way to insure that patents aren’t improperly extinguished; if kept, the following 100(k) wording would better insulate this provision from such improper attacks by the courts or PTAB:

    Section 100:

    (k) The term “useful” means any invention or discovery that provides utility in any field through human involvement or intervention.

    What America sure doesn’t need is the courts (or the PTAB) twisting Section 100 into the next Section 101 innovation-killer.

    Eileen @ 9: Thanks for the link to the press release. I’ll note that where the release states: ” . . . featuring three panels of five witnesses each, for a total of 45 witnesses over three days.”; I presume that — since 3 days x 5 witnesses = 15, that the “45” was a typo.

    Do you (or anyone) know if/how these hearings may be viewed? Inventors may want to respond with calls, e-mails, and letters to any folks trying to shut down this critically important reform.

    B @ 24: Your briefs are excellent and should win the day for your clients. If not, I hope there will still be time to protect their invention with the likely forthcoming eligibility / 101 reforms.

    B @ 29: Do you have a link / reference to Judge Rich’s description?

  31. B May 26, 2019 4:11 pm

    @ Ternary “Why would “generating an image of a scene” invoke a 112 rejection and “generating an image of a scene with a camera” not. And how specific does the structure need to be?

    FYI, functional claiming doesn’t necessarily evoke a rejection. Merely raise the possibility of an interpretation under 112(f). You get what is disclosed and the equivalents thereof

  32. B May 26, 2019 4:21 pm

    @ Pro Say “B @ 24: Your briefs are excellent and should win the day for your clients. If not, I hope there will still be time to protect their invention with the likely forthcoming eligibility / 101 reforms.”

    You are kind and I appreciate your words. I am just stressed beyond all belief because to the semi-capricious nature of the Supreme Court and lunacy of the CAFC has destroyed the lives of good people, such as my clients. The DoJ’s recently filed Opposition is available for review. It opposes everything but addresses nothing. That said, I’m not criticizing the DoJ on this. They’re ethically bound to protect whatever stupid decision the USPTO and CAFC spews, and also ethically bound not to lie. Saying nothing is the best they could do.

    That said, I am interested in what it means for a decision to be “abrogated.” Does it mean that collateral estoppel and res judicata effects are nullified?

    B @ 29: Do you have a link / reference to Judge Rich’s description?

    There’s several Rich articles that address this, but see “Principles of Patentability,” section IV. https://ipmall.law.unh.edu/sites/default/files/hosted_resources/lipa/patents/patentact/rich.pdf

  33. Ternary May 26, 2019 11:22 pm

    B, That is not what the “draft” says. As NW points out: “An element in a claim expressed as a specified function without the recital of structure, material, or acts in support thereof shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.”

    And functional claiming, despite what the MPEP says, constantly evokes 112 rejections. So now the question becomes: how detailed does the spec need to be under this proposal? Do I need to disclose all different forms of a camera? (or of hinges? What about processors?) To assume at this stage that the Courts and as a consequence the USPTO will be reasonable on this is naive. How much structure does a processor have that performs a calculation? Do you have to disclose an ALU or perhaps even a floating point architecture? Is an Intel processor different from an ARM processor? Or are they equivalent? Why does this have to become an issue now, during a discussion about patent eligibility?

    I find the question what this new proposal means a legitimate one. And having learned about things being “conventional and routine” that are clearly not, I would not be surprised that cameras, hinges and processors recited functionally suddenly have “insufficient” structure after this becomes law, or that clever attorneys will start making those arguments. I am sure that SCOTUS will be open to these arguments.

    I can see where this is going with for instance business methods: the subject matter will be patent eligible, but unfortunately insufficient structure is claimed and the specification is light on structure. That is: a processor instructed “to do something” has insufficient structure to meet the 112 requirements.

    A camera per se has insufficient structure, if you want to process image data. In that case a camera needs to have an electronic sensor. (as it cannot be a film based camera.) One of ordinary skill knows that, right? Why make this an issue? Must it be assumed that an inventor is trying to deceive the general public, the USPTO and the courts by claiming merely a camera?

    So, despite your effort to minimize this, I really want to know what is behind this draft and what the intent of Congress is on this. So we don’t have to argue in court later about something we thought it meant.

  34. Benny May 27, 2019 1:53 am

    Ternary,
    “Do I need to disclose all different forms of a camera?”
    Yes, because then your application becomes 102 prior art against your competitors. Otherwise you leave the door open for specious arguments which your competitor’s attorney might win.
    “Must it be assumed that an inventor is trying to deceive the general public, the USPTO and the courts…?”
    That is a possibility which you should take into account.
    I’ve been down both roads, this is not hypothetical.

  35. Night Writer May 27, 2019 8:21 am

    @29 B

    B correctly points out that all this 101/102/103/112 stuff was sorted out by J. Rich or at least articulated by J. Rich back in the 1950’s. This is exactly right. What we have seen is anti-patent judicial activists intentional cloud the issues. There are no problems with the 1952 Patent Act.

  36. Ternary May 27, 2019 10:39 am

    Benny, Personally, I would maintain that a generic term, like digital camera should suffice.That provides sufficient structure to one of ordinary skill. It is like the use of the word “circuit” that was challenged as being a “means for” expression rather than a defined structure.

    My real concern though is what the intent is of this “draft” 112 requirement. Should we go down to the individual component level in the specification? I would like to see an explanation and a reasoning behind this 112 requirement.

    What about something like “storing data?” Should it be “storing data in a retrievable manner?” Or “storing data in a retrievable manner on a memory?” How many of us describe in a spec how data is stored and retrieved on a memory? Should I include an address decoder? Much of this is of course good spec writing. But I would like to know if this new requirement is a pre-cursor to Alice-like cases on 112 issues.

    If this is left open ended, I am particularly concerned about processor based claims. What is sufficient structure related to instructions on a computer? The functional effects? Some pseudo-code expressions? Listings of code?

    For instance, RSA operates on numbers of 100s of digits. The original patent describes in detail how RSA encryption and decryption works. However, the inventors, while claiming a multiplicative inverse, do not teach how such an inverse is determined, which under the new “draft”, I could argue, is a lack of structure. Even though for instance, the Extended Euclidean Algorithm is well known. Furthermore, “standard” computer languages truncate or round large integers, to a short mantissa and an exponent, which makes it inoperable for RSA. One has to circumvent that by using a BigInteger representation. That is an extra action to be implemented on “standard” computers to enable execution of RSA for practical purposes. This is not disclosed in the original RSA patent. Does that mean that the original RSA patent lacks the disclosure of structure required by 112?

    I am not against enablement and description requirements. But I would like to know what is expected. And the sudden appearance of 112 structure in a draft proposal intended to address 101 issues, is probably not as innocuous as it is made to be. What the whole 101 debacle has taught me is that “yes indeed, there are people out there who are planning and scheming to deny inventors valuable patents on valid and valuable inventions.” I do not mean attorneys who jump on the crazy 101 bandwagon and maintain before the Federal Circuit with a straight face that transmission of data signals is an abstract idea. There are those too. I mean clever and strategic thinkers who deliberately insert vague wording into statutory documents, that sound by itself as reasonable, to be leveraged later in court to invalidate an issued patent. The prize being a nutty decision by SCOTUS to wreak havoc and diminish patents.

  37. Benny May 27, 2019 10:44 am

    Ternary,
    Over here we draft and prosecute patents according to what “is”, rather than “what should be”. We most certainly do not rely on the common sense of the examiners or the courts.

  38. B May 27, 2019 11:15 am

    “There are no problems with the 1952 Patent Act.”

    Iancu opined on the same issue a bit ago although the stupidity spewed by Taranto against functional claiming is fairly recent. It was a secondary rationale in addition to his “physical realm improvement” stupidity that came up in the Investpic decision. SAP America’s Opposition brief is denying that Taranto established a “physical realm improvement” test because Taranto only used the phrase twice in his opinion when explaining why the claims were patent ineligible.

    We live in an era when the mental retardation of the patent community has reached an all-time high.

  39. B May 27, 2019 11:38 am

    @ Ternary “And functional claiming, despite what the MPEP says, constantly evokes 112 rejections. So now the question becomes: how detailed does the spec need to be under this proposal? “</b

    I’ve never received a 112(f) rejection in 20 years. I’ve receives a 112(a) rejection for lack of disclosure as has every patent attorney under 100 years old.

    “I would not be surprised that cameras, hinges and processors recited functionally suddenly have ‘insufficient’ structure after this becomes law”

    Yes, and that is a legit concern, but we’ve dealt with such issues off and on for a long time. We know there is no need to disclose the really well known under 112(a)’s enablement requirement, but determining whether structure is disclosed is a 112(a) written description issue. Both these issues have factual underpinnings as seen by OSITA. With this in mind, this issue becomes a battle of the expert witnesses at the end of the day, and nothing really changes.

    I get your point, however. Examiners will issue a lot of bad rejections for a while, and the ever-oblivious PTAB will ignore law to affirm the examiners. I assure you that I’ve got an appeal ready to be put in front of the PTAB with a fact-based written description issue, and a friend of mine recently got slammed by the CAFC for not entering evidence to counter the examiner’s evidence-free assertions.

  40. mike May 28, 2019 1:12 am

    @Pro Say

    “Do you (or anyone) know if/how these hearings may be viewed?”

    Open to communicating privately? I think we share common interests. On many fronts. Let me know.

    mike

  41. Pro say May 28, 2019 6:20 pm

    Mike @ 40. Thank you for the kind invite Mike, but; due to confidential business and other reasons; I need to, respectfully, maintain the anonymity level at which I operate. Trust you understand. Thanks again.

  42. Kelly Mackin May 28, 2019 9:28 pm

    what about the presumption of validity and standard of evidence. in our 101 case, the judge declared that only a preponderance was required and brushed aside presumption. Lastly, why not fix patents as property rights while we are at it?

  43. mike May 28, 2019 11:53 pm

    Pro say: I understand. I too take special care to maintain an anonymous identity. However, I do have a way we can initiate an exchange to go offline while remaining anonymous here on this website. In the interest of enhancing legislative pursuits and nothing more, would you be open to pursuing that? My plan is to send you a link with questions that only you would know the answer. If you are concerned your clicking of a link might reveal your IP and/or location, download the Brave browser – brave.com – and open a Tor incognito tab. Let me know and I’ll send the link. Behind that veil, you are free to exchange any (real or false or temporary) name, email, or number you want with me. I’ll likely do the same.

  44. Pro Say May 30, 2019 11:11 am

    Mike @ 43. I’m truly sorry; your plan is certainly creative; but I’m just not comfortable with browsers I’m not familiar with, nor with anything having to do with Tor. I can’t in any case discuss any of my cases; and — since he was fortunate enough to be invited to speak before Congress — I’d share any legislative thoughts with Paul Morinville. Thanks for understanding.

    Now, it’s back to the trenches for me.

  45. mike May 30, 2019 10:44 pm

    Pro Say @ 44:
    I hope when you post comments here you are not using Google’s Chrome, Apple’s Safari, or any Microsoft browser then, where your IP and your visited URLs are tracked, along with cookies that can identify you from other authenticated websites you visit.

    Brave is not owned by any of these three PTAB giants; incognito browsing removes identifiable cookies on exit; and Tor keeps your IP address anonymous.

    Sending info to Paul is good, I guess. I wanted to reach out to you because I value your opinion, and I may be able to share your ideas with others who are also testifying. Your call, of course. Offer is on the table, and I’ll send a link. Again, you can stay anonymous even with me. (Email addresses are free, just like temporarily using a Google Voice number or other mobile app to get a fake number.) I just want to gain clarity on your ideas prior to my influence.

  46. Pro Say June 1, 2019 3:06 pm

    mike @45: Thanks again for the offer, but it’s best for me to stay with the status quo in this regard.

    That said, rest assured that the committee is in receipt of — and is considering — my recommendations (which I have and will continue to share here on IPW).

    Just as they are considering the recommendations of other inventors and their counsel who have taken the time and made the effort to thoughtfully and respectfully reach out to them.

    I also know for a fact that the committee is giving careful consideration to the articles — and the many comments — here on IPW.

    Thanks again mike.