Function and Structure in Computers: A Stakeholder’s View

“There is a difference between engineering requirements and the dogmas of patent prosecution. However, the gap between legal patent requirements and engineering practice in the United States, especially in computer implemented inventions, has become so large as to be irrational and unsupported by scientific facts.”

As an independent inventor, I am greatly concerned about the new proposed Section 112(f) wording related to “functional claiming” that was put forward as part of the fix for patent eligibility law. While the bill is on the back burner for now, lawmakers have stated their desire to revive it. In my mind it is part of a continuing effort to prevent inventors of computer-implemented inventions from experiencing smooth sailing in patent prosecution and patent assertion.

A description of what computers do and how they “logically” work has a close relationship with its physical structure. These aspects are closely interwoven and largely equivalent. Executing a computer operation means that physical circuits are activated. A computer operation or function is not a disembodied occurrence. An instruction executed by a computer is a rapid configuration/activation of one or more (usually electrical) circuits.

Technical Background

In the early 1950s, the use of Boolean algebra in circuit design as proposed by Claude Shannon became dominant in computer design. Two eminent computer designers, Dr. “Gerry” Blaauw and Dr. Fred Brooks of IBM formalized the relation between what a computer user experiences and what the hardware is. A design of a computer, they say, has three levels:

a) Architecture; (What the user sees or experiences, the user in their view being a system programmer. One can easily expand to application programmers.)
b) Logic implementation (the logic design, usually in terms of a Boolean algebra); and
c) Realization (the physical structure).

(Drs. Blaauw and Brooks with Dr. Amdahl were the original architects of the legendary IBM System/360 series of machines, so their writings and ideas have considerable weight).

Design levels describe the same structure, but in different terms. For instance, a machine may perform on an architectural level a fixed-point addition (a+b)-radix n. An end-user may describe this as an integer addition by a computer. On a logical implementation level, the combining may be described by a carry-ripple structure or a faster carry-predict structure. On a realization level, the structure may be realized as relay switches, in TTL components, in CMOS based circuitry, in optical circuits or in any circuit that is characterized by the logical implementation and thus by the architecture. All generate the same result.

Combining two numbers by a digital machine into a sum is not merely a functional description, it inherently has a physical realization. For illustrative purposes a calculation operation is used as example. But all computer operations are captured by this approach.

Actual Cases

I work with a computer function called “an addition over a finite field GF(n=2^p).” This function is realized by XOR devices that bitwise process two words of bits. This is a known physical device and is not merely a mathematical concept. It is used in encryption (in the Advanced Encryption Standard AES) and in hashing (such as the Secure Hashing Algorithm versions). As logical implementation, the function represents physical states of a device based on a switching table (truth-table), which can be realized as data stored on a memory or as a combinational circuit.

I invented a way to modify the computer device so that it maintains major properties, but behaves differently. (If you are interested how this works you can find extensive descriptions on ternarylogic.com.)

The result is a modified computer device that replaces the classical addition over GF(n=2^p) with a novel equivalent but different device. Inventions in these cases are on a spectrum of implementation and architecture. The modification of switching functions are best characterized in terms of logical implementation. On an architectural level the modified functions are used in repeat application in what one may call “exponentiation.” On an end-user level, modified functions are applied to customize known cryptographic methods like AES, SHA, RSA and Diffie-Hellman.

One result is a fantastic number (in the order of factorial N) of potential modifications of known cryptographic methods. (for AES for instance over 10¹⁰⁰ modifications.) The inventions provide a quantified advantage and integration in a practical application. So, home free, one expects. Not so fast: a rejection as functional claiming is now on the horizon.

In Computers: Function = Structure

Switching behavior can be described on an architectural level in terms of mathematics, and in implementation by Boolean logic, but ultimately these descriptions are labels for physical structure. Consequently, a digital machine doing something is not merely functional but also structural and inherently so. If the machine cannot perform in accordance with the claimed function then it does not have a required structure. And when a machine can perform a claimed function then it automatically has a corresponding structure.

The description of what a computer does, thus necessarily should be interpreted in terms of the machine and the machine structure, and not in terms of what a human can do. That is why computer-implemented inventions are not directed to an abstract idea such as Boolean algebra.

I did (expectedly) run into Section 101 rejections. I give credit to examiners who were convinced during an interview that the description pertained to a physical structure (rather than mathematics) and once convinced they were very helpful. However, this depended on the specification disclosing the structural aspects, not because of the arguments per se. For instance, it was alleged that an XOR function is functional, not structural. I had to show in the spec where an XOR was designated a device. However, an XOR function performed by a computer is a structural device, no matter if I say that explicitly or not. There is no software in the world that can execute an XOR function without having access to a physical XOR device.

The current Section 112(f) reads:

(f)Element in Claim for a Combination.—

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

The new Section 112(f) language would read as follows:

(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.

I believe that under this language, rejections will move from “abstract” to “functional”. Basically, they will reflect the current issues in merely another form. The patent on RSA encryption that would now survive an Alice challenge, would probably be rejected as claiming functional language under new 112(f) rules.

There is a difference between engineering requirements and the dogmas of patent prosecution. However, the gap between legal patent requirements and engineering practice in the United States, especially in computer implemented inventions, has become so large as to be irrational and unsupported by scientific facts. “Reasonable people” would and should be able to come up with a compromise on acceptable use of functional language. The history of Alice has demonstrated that reliance by inventors on “reason” in courts and the USPTO is very much detrimental to obtaining valuable patents.

Prosecution of computer implemented inventions, certainly in light of their economic significance, reflects an irrational way of thinking that persists and has infected other types of inventions.

Let Them Prove It Isn’t So

It was stunning how easily a new 112(f) requirement was thrown into the mix of solving Section 101 issues. I believe that, in response, inventors of computer-implemented inventions should present some demands of their own on functional claiming. So, here it goes:

1) Generic terms such as processing instructions with a processor, storing and retrieving data from memory or storage, transmitting and receiving data (through a network) with transmitters and receivers are known in the art as being based on physical structures. There should be no further requirement in a patent on detailing these aspects.

2) Applicants should be allowed to import elements from incorporated references into the specification after allowance/issuance to overcome post-allowance “functional claiming” issues. Invalidating a patent because of failure to explicitly disclose a structure, while referring to those structures in an incorporated reference should no longer happen. Teaching for instance a digital filter by incorporation by reference, or a GPS receiver, adequately teaches such structures when claimed. Teaching a single instance of a structure should be enough to cover the generic structure.

3) Sufficiency of disclosure of a structure should be determined by the USPTO. If the specification is deemed to not sufficiently disclose a structure, an applicant should be able to amend the specification to include structures found in incorporated references. An applicant should be able to rely on the USPTO for this. Once a patent is issued, no court should be able to invalidate a patent on functional claiming. The Courts may blame the USPTO for sloppy work and even remand (which would be novel), but not invalidate a patent on that basis. When an examiner understands an invention, who is a judge to say that it has no structure.

4) Executable programs (source code) teach structure and should be accepted as proof of structure.

5) There are different interpretations if patents that are declared invalid should be eligible for re-issue. An invalidated patent should be automatically entitled to at least a continuation. A patent should not be a one-chance crapshoot that may or may not survive a challenge. Infringers are given plenty opportunities to invalidate a patent. It is about time inventors should have equal opportunities to correct issues.

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Copyright: iqoncept

Peter Lablans Peter Lablans is a prolific independent inventor on two patent portfolios, one on cryptography and another on cameras. You can find free trial programs that implement his cryptographic inventions on [...see more]

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

Join the Discussion

40 comments so far.

Anon
March 7, 2020 06:12 pm
TFCFM,

You join the ranks of some illustrious company in your inability/unwillingness to enjoin a dialogue on the merits, leastwise, with anything other than cheap rhetorical games.

It stands noted that your views are quashed and you offer nothing meaningful in their stead.
Anon
March 4, 2020 10:42 am
TFCFM,

It is beyond clear — and not just to discerning attorneys trained in the art of rhetoric — that the one here between you and I that is a “legend in their own mind” is you.

Your game is up.

What you display here is called ‘running away,’ or ‘smacked down.’

Your ‘offer’ here to “intelligently discuss” is clearly a false one. Counter points to your entire line of reasoning have already been provided. There is NO “call the other commenter unkind names” involved in those counter points.

Instead of actually addressing ANY of those substantive counters, we have YOU playing games.

Maybe instead of this (completely inappropriate) condescension from you, you could spend your energies actually contemplating and coming up with something on point….
TFCFM
March 4, 2020 10:30 am
You appear to be truly a legend in your own mind.

If that floats your boat, enjoy. If, on the other hand, you’d like to intelligently discuss some issue, you’ll need to offer intelligible comments to which a reply (other than causing folks to wonder, “What the heck does this guy think that he’s talking about, other than merely trying to call the other commenter unkind names?“) is possible.
Anon
March 3, 2020 01:21 pm
That’s your reply?

More “huh, what?”…

I lay out EACH of your points and deconstruct every single one.
TFCFM
March 3, 2020 11:13 am
Anon: “…further evidences your lack of understanding of the US Sovereign historical desire to make a patent system that was NOT a “Sport of Kings.””

You are ABSOLUTELY correct that I haven’t the foggiest understanding of what you so much as think you’re talking about.

I CAN, however, imagine the directions in which each of your eyes must have been looking as you typed such nonsense.
Anon
March 2, 2020 03:04 pm
TFCFM,

Your own reasoning – through the mirror darkly:

1. Yes, this possibility exists. And yes, this possibility was not only recognized, it was brought to your attention as an item that ALSO defeats your “Parade of Horribles” and ‘high cost’ that buttressed your opposition. As I have not seen any counter point from you on this, nor have your provided any substitute item as a concern, your position remains incongruent with the better recommendation for a change in the law from Peter. Further yet, you appear to think this cost (which has neutered your “Oh Noes” is “and at a fairly trivial price” which of course is YOUR value judgment unconnected to any actual point on the table. Why require ANY additional price for something already a part of the Quid Pro Quo?

2. “and is in an ideal position to judge the likelihood that they’ll be considered invalid or unenforceable for some particular reason”

Absolutely false. Innovators – especially small size ones absolutely lack the sophistication that you appear to want to take for granted. This is yet another sign (on a long and growing list) that you do NOT have any real experience in protecting innovators and their work.

On top of that, Pete’s proposal need not change that aspect (even if it were true). Your comment is a non sequitur.

3. Another non-sequitur. Unless of course you want to augment Peter’s actual suggestion and have a fully wide open response to a granted claim being nullified…

This point just does NOT support your position, TFCFM, and if anything, only points out that Pete’s idea could be augmented even more. That’s a lose-lose for you.

4A. this is not a reason – this is merely a reflection of your position already stated (and does not even reflect that Pete has responded to the negatives attached to this already stated position).
4B. Absolutely false — and by your own position. You may choose to ignore counter points presented to you, but you do not get to ignore the facts that such counter points present.
4Ci. This has zero to do with any examiner behavior in regards to EITHER what they should or what they do allow. Your counter does not connect.
4Cii. Three words: Quid Pro Quo. You also raise more “Parade of Horrbiles” that just do not fit, as your counter here rests on the notion that ANY such claims as may come through Pete’s suggestions would NOT be proper claims. This comment is NOT ‘anti-Pete’s suggestions;’ this comment is just anti-patent.
4Ciii. a new point from you, and plainly, this is disconnected from anything that you have offered, and on its face has no meaning. Perhaps you meant to say more here.
4Civ. Again, your own contribution and admission at 1. already covers this, and thus, this point is NOT germane to what Pete suggests.

You appear to instead of offering any real concerns, be only concerned with a cost factor. Do you understand that THIS comes across ONLY as an Efficient Infringer position (the wealthy can compete on costs), and further evidences your lack of understanding of the US Sovereign historical desire to make a patent system that was NOT a “Sport of Kings.” The bottom line (sic) notion of yours is that if you can pay the extra, then it’s ok.

Your proposed “position,” while merely sounding noble, does not live up to any appreciable amoung of critical review.
TFCFM
March 2, 2020 10:28 am
PL@#32: “You provide zero reasoning why it is not reasonable to provide better protection for inventors.”

I apologize if I did not make that reasoning sufficiently clear that you were able to perceive it. Let me try again, as simply as possible:

1. Every patentee ALREADY has the opportunity to file one or more continuation applications when an application is allowed — and at a fairly trivial price (few thousand$ per year, tops, if one is merely keeping a continuation alive). Your proposal does not change this.

2. Every patentee knows his or her claims better than anyone else on earth and is in an ideal position to judge the likelihood that they’ll be considered invalid or unenforceable for some particular reason (and everyone can worry about invalidation for unforeseen reasons). Your proposal does not change this.

3. For any continuation application, an applicant is free to pursue allowance of claims similar to, different from, or VERY different from any already-allowed claims. Your proposal does not change this.

4. Your proposal appears to differ from current practice primarily (solely?) in that you would eliminate the co-pendency requirement, at least in situations in which an issued patent (or, perhaps, one or more claims thereof) are invalidated. This seems unnecessary and unwise to me for at least the following reasons:

4A. Patentees can already secure a ‘guaranteed’ chain of continuation applications, so the proposal is unnecessary.

4B. Your proposal would decrease certainty among issued patents. Right now, if a patent issues with no related pending applications, the world knows that the issued claims are the extent of the invention. With pending related applications (whether under current practice or your proposal), semi-predictable uncertainty reigns (future claims may issue, but should be limited to what was disclosed – fooling-a-gullible-examiner excepted). Under your proposal, issue-without-related-applications becomes a less-predictable circumstance, with no good reason.

4C. Your proposal invites gamesmanship:
i. Get gullible (or, at least, imperfect) examiner to issue easy-to-allow-but-invalid claims.
ii. Sue someone whose product/process was not envisioned by the applicant, not described in the specification, but arguably within the scope of a vaguely-worded functional description of what the applicant’s invention is intended to achieve.
iii. Get court to invalidate allowed claim(s).
iv. Using defendant’s product/process as a guide, patch together the most-similar-looking claim that the vague specification could even arguably support, and file as a continuation.

Such gamesmanship is possible (and practiced) under current procedures — but has a cost (keeping alive one or more continuations as your submarine-specification lurks, waiting for a target to appear). Removing that cost will only encourage the gamesmanship further.

Thus, because your proposal promotes gamesmanship by reducing its cost and the effort required, while providing genuine inventors no rights that they do not already have, I believe it is a poor idea.
Anon
February 28, 2020 06:34 pm
TFCAFM,

You turn to word games to try to obtain some small pedantic victory, and even THAT will elude you.

Take note: “prevail over” is NOT something that the law does to the attempted rule making.

“Prevail over” is what the parties did by correctly challenging the proposed rules.

There IS a semantic difference, and here, that difference defeats your pedantic attempt to NOT even bother with the original point being offered.

I note that you made no other comment to the rest of my post. I most definitely “get” why you did not do so.

Do you?
Peter L.
February 28, 2020 03:55 pm
@29. An infringer does not have to do anything but infringe a patent. No cost whatsoever. Up and until the time an assertion is made of infringement. Reasonably, an infringer should then pay the patent owner, who of course nowadays has to make all the cost of keeping an application alive, in case a court invalidates the claims. So, just to make sure the claims eventually “stick” an inventor has to go through the extra cost of additional filings. That is an imbalance and contrary to the purpose of a patent, which is to protect an invention. Furthermore, the cost of invalidating a patent is usually less than paying for a license. That is why this whole circus exists. It all adds up to an imbalance in favor of infringers.

An irrational and ad hominem allegation that I am delusional puts you in the box of nowadays screamers and shouters when arguments fail them. Don’t do it.

As Anon pointed out earlier, an inventor has already delivered the Quid (disclosure of the invention) for the Quo (the patent.) On that basis some guarantee is warranted for what is issued. While it may be wise to file continuations, (I actually file CIPs to further expand aspects of the invention), it is not reasonable. You coming up with the nonsense explanation that filing continuations is cheaper than filing an IPR is a non-sequitur. As an inventor I am entitled to a valid patent. If an error was detected, that error needs to be able to be corrected. What is the justification for the need to “keep the door open?”

You provide zero reasoning why it is not reasonable to provide better protection for inventors. I understand why, because it will not protect the infringers, for whom you have all sympathies and none for inventors, it seems. It is reflected in about every comment you make.

I admit, I am all for inventors. I admire their creativity, their sense of purpose and determination to improve this world. What the heck, I am an independent inventor myself. I believe inventors who have obtained a patent are entitled to a fair shake. That is, they should be able to assert their patent to protect their invention. If for some reason the patent is deemed deficient, a reasonable opportunity should be provided to repair. You have not yet given your opinion on that issue. I suggest a continuation, but an automatic re-exam is also a possibility.

One question is: why are you against a proposal of an automatic allowance of a continuation in case of invalidation? It will benefit independent inventors and improve the quality of claims asserted against infringers. Infringers and their advocates complain a lot about the quality of claims asserted against them. This is a great opportunity to have better claims asserted.

The fact that I file a series of continuations does not change the spec and thus what I can file is already determined. (Yeah, yeah, I know a “lot of words”) Your argument about the type of claims that will be filed under such change has been refuted by me earlier. So, in conclusion: such a continuation rule will benefit independent inventors and will not negatively affect rights of infringers. What’s not to like?
angry dude
February 28, 2020 11:02 am
@Anon

Dude

You entire “profession” of patent attorney is getting trashed
Its literally getting pooped on…
Care about that???
TFCFM
February 28, 2020 10:10 am
Anon@#26: “This was not a matter of a “statute prevailing” as much as it was about the Office trying to limit and curb the very pertinent point that you were clueless about.”

That’s odd. If you actually read the case, you’ll come to the unavoidable conclusion that what happened is:
– USPTO proposed rule change imposing a new limitation on continuations (inter alia).
– Parties who would be adversely affected challenged the proposed rule change.
– A court found the proposed rules contrary to the patent statute and the USPTO without authority (surprise!) to change or defy the patent statute.
– The court enjoined enactment of the proposed rule change that was challenged.

If that isn’t “a statute prevail[ing] over a contradictory proposed rule,” then I don’t know how better to describe it.

(Maybe “the fundamental nature of statutes and rules” — I suspect that may appeal to you.)
TFCFM
February 28, 2020 10:04 am
PL@#25: “There is of course an imbalance. (Do you actually read the articles that you comment on?).”

When you are the author of an article that expresses an opinion (“there is an !!!imbalance!!!), I’d dare say that that doesn’t credibly validate your repetition of that same opinion in a comment to the article.

PL: “If a patent is invalidated their is very limited chance to get a re-issue. The cost for a patent owner to keep an application alive is a cost an infringer does not have to make to try to invalidate. That is an imbalance.”

You’re delusional. The cost of maintaining a continuation application (or even a string of continuation applications) is FAR, FAR LOWER than the cost of bringing a PGR, an IPR, a DJ action in a district court, or raising a defense of invalidity in a district court or ITC action. If there’s any “imbalance” here, it’s that it’s far less expensive for a patentee to “keep the door open” to unknown-future-claims than it is for an accused infringer to try to shut the door even once on issued claims.
Anon
February 27, 2020 04:48 pm
angry,

That you think that I care and even asked what you lost, let me repeat what I wrote above (with a little emphasis to help you):

“I don’t know how exactly you “lost” whatever it is that you lost (and that has made you so ANGRY), but frankly, given your own lack of caring and attempts to promote (your) emotion over ANY reason, I just do NOT care all that much about your particulars.”
angry dude
February 27, 2020 03:36 pm
Anon @23

Dude,

You are really annoying.

I got my patent during “Reject Reject Reject” era after first office action (and a trip to wash dc with my attorney which cost me 4 grand – just for the trip) and added a dozen new claims without changing any original claims btw
So unlike you I put my money where my mouth is
BUT… my patent has no value right now as all of us here know…
Pretty much anything computer-implemented and algorithmic in nature has zero monetary value cause it can’t be enforced
How dare you to ask me what I lost ???
Anon
February 27, 2020 01:49 pm
TFCFM,

Rare it is the high levels of both smugness and error, but you capture both.

“… what you guys are on about? In case you hadn’t noticed, the statute prevailed over a contradictory proposed rule.”

This was not a matter of a “statute prevailing” as much as it was about the Office trying to limit and curb the very pertinent point that you were clueless about.

Yes, those people fighting the rules prevailed. But it took those people pushing back to do so — the very same type of push back that your own “the Court is always right, sonny that’s called current law” type of attitude would not dream of doing.

Instead of being smug and dismissive (and thus, not learning anything here) you would do well to be a bit more contrite and realize WHY the point was being advanced in the first place.

And in case you did not notice this, Peter IS advocating for a change in law.

Also, you did not seem to notice (even as you lauded Peter to “just keep a continuation going,” that your “parade of horribles” is a fallacy — for the very fact that you share that a string of continuations COULD be entertained. In that string then, ALL of the ‘uncertainty’ that you moan about remains present.

What Peter presents then (and yes, it is a change) is to eliminate the string and in the particular instance that a court determines an error (an error mind you of the Patent Office in granting a claim successfully challenged after grant), that in that case, the patent holder is not bereft of any and all Quid for the Quo already taken by the Office.

What Peter’s suggestion does do is change the law on the current ability to file — within two years — a broadening reissue.

Given that your “parade of horribles” is shown to be a fallacy (if one under the current law merely spends “X” amount as a type of ‘floating retainer,’ of live continuations — thus showing zero actual societal cost — do YOU still: “simply don’t see any scenario in which societal benefits of the rule you propose are not overwhelming outweighed by societal costs.”
Peter L.
February 27, 2020 01:00 pm
TF… The facts are against you on this. There is of course an imbalance. (Do you actually read the articles that you comment on?). If a patent is invalidated their is very limited chance to get a re-issue. The cost for a patent owner to keep an application alive is a cost an infringer does not have to make to try to invalidate. That is an imbalance.

I personally file continuations as I have worked against guys like you. I understand why a continuation after invalidation is such an unwelcome change for infringers. Many specs (with “a lot of words”, I like your remark on that. Do you actually read specifications?) generally have enough matter to repair the claims. Clearly something that infringers do not want.

We know, the purpose of infringers is to pay nothing. Even when facts are stacking up mile-high against infringers they still pursue invalidation, because even if they lose their cost will be minimal. Infringers use the system to their maximum benefit. So be it.

To counter that imbalance, I propose to provide deference to the work of the USPTO. That is, an inventor may rely on validity of a patent. During invalidation procedures errors in the claims may be identified. After invalidation, the patent owner is given the opportunity to repair the claims. This improves the quality of the claims and thus of the patent system. The owner may also tweak the claims to current market conditions, which may dramatically increase demands for compensation. This may convince an infringer to negotiate with a patent owner before engaging in invalidation efforts. Benefits only!!!

Ultimately this is a political decision to protect the interests of (independent) inventors. It is in the same vein as reduced fees for small and micro entities. Inventors will benefit from this and not infringers. Clearly your interests are in maximizing the opportunities for infringers to invalidate. So you will not agree.
The current need to file continuations is one of a series of traps that most independent inventors are unaware of or have no sense of its significance until it is too late. Most independent inventors will be unable to carry the cost for this for 10 years or more. And, it is an unjust cost.

The ability to file a continuation on a patent that has been invalidated is to the benefit and protection of IP rights of inventors, while not affecting the right of trying to invalidate undeserving patents.

I am not trying to convince you to agree with my proposal. You won’t, because that is not where your interests are. But, this proposal will benefit patent owners to hold-on to IP protection of their invention right at the time that an invention turns out to be valuable. And yes, to the detriment of infringers and no, the sky will not fall.
TFCFM
February 27, 2020 10:26 am
PL@#21: “ Search on Dudas, “patent quality” and continuations…

Tafas v. Dudas is what you guys are on about? In case you hadn’t noticed, the statute prevailed over a contradictory proposed rule.

That does not remotely alter the fact that patent applicants are able to file one or more continuation applications for any co-pending patent application. As with all patent statutes, section 120 is subject to revision by Congress but — other than that — the right to file continuations is already guaranteed.

PL: “You have not responded yet why the asymmetry in rights between patent owners and infringers is not unjust. That is: why should infringers have more opportunities to invalidate than inventors to correct mistakes?”

My apologies — I figured the ridiculousness of the assertion was so self-obvious that you weren’t serious. There IS, of course, no imbalance:

– For EVERY patent, the patentee has the opportunity to file an infinite number of continuations prior to issue (and one is sufficient to keep ‘revision’ rights open).

– For EVERY patent, an accused infringer has a (technically) infinite number of opportunities to argue invalidity/unenforceability (although, practically speaking, estoppel will surely kick in at some point).

If you’re going to take allowance of a patent with questionable claims (or, perhaps more wisely, any patent one cares about), file a continuation prior to issue.
Anon
February 26, 2020 08:34 pm
angry,

The myopia you have is absolutely incredible.

Anything that happens to you is the STRICT measure of everything.

You obtained a patent during the famed “Reject Reject Reject” era, well then there was NO problems then (despite the allowance rate dropping from historical 75% rate down to the 30% rate or so with no change in anything other than the Office simply Rejecting).

I don’t know how exactly you “lost” whatever it is that you lost (and that has made you so ANGRY), but frankly, given your own lack of caring and attempts to promote (your) emotion over ANY reason, I just do not care all that much about your particulars.

I DO very much care about the law during BOTH periods, the details (facts) that are in play with the law, and how the law has become subverted.

I do NOT care how you feel about what I do and do not care about. Quite frankly, you epitomize the worst possible reaction to something ‘bad’ happening: an unremitting wallowing and rejection of any and all reason — with which the ONLY sensible betterment is possible to come from.

As they say, if you are not a part of the solution, then you are a part of the problem.

How you continue to choose to react emotionally and exclude any sense of reason is most definitely part of the problem.

So much so in fact that you have absolutely refused to even recognize that your mania message is one of the things that Efficient Infringers want. They celebrate not only your madness, but your choice in reacting to that madness.
angry dude
February 26, 2020 04:58 pm
re. dudas

My patent has that dude’s signature ..

As bad as he was.. the USPTO was largely not corrupt under Dudas
They still had qualified and honest examiners doing their jobs
Peter L.
February 26, 2020 03:11 pm
1. Re. Dudas, a simple Google search may enlighten you. Search on Dudas, “patent quality” and continuations. “Patent quality” is really the snake-oil ingredient/argument for the anti-patenters.

2. Many inventors do not trust these GUARANTEES, and with good reasons. (see 1)

3. Yep. I absolutely propose eliminating co-dependency requirements in case of invalidation, as you very well understand, because you have argued that the sky would be fallen in that case. Such a change would be simple, reasonable and improve predictability in patent cases. It also would improve the quality of patents that are being asserted, meeting the deep desire of anti-patenters, who abhor the current quality of patents.

4. You have not responded yet why the asymmetry in rights between patent owners and infringers is not unjust. That is: why should infringers have more opportunities to invalidate than inventors to correct mistakes?

5. I further maintain that in computer-implemented inventions structure is inherent to function. I agree with NW@15. But I don’t think you have to be an EE Ph.D. to understand that.
Anon
February 26, 2020 02:04 pm
TFCFM,

What Peter is referring to is what any actual practitioner is aware of during the Dudas watch in the attempt by the Office to “somehow ?suspending? ?defying?” that part of the patent laws (and yes, entirely relevant).

May I suggest that you read up on the Tafas case and the subsequent efforts of David Boundy and the Claims and Continuations rules fiasco.
TFCFM
February 26, 2020 11:36 am
PL@#18: “ability to file continuations is not guaranteed. Remember director Dudas?”

I don’t understand what you are trying to say. If one can file an application, one can file a continuation of that application — it simply needs to be co-pending if you want to claim priority, just as has ALWAYS been the case. (I don’t recall Mr. Dudas somehow ?suspending? ?defying? that part of the patent laws – please explain if relevant.)

The only difference that I can discern between what you propose and what the law currently is that you propose to eliminate the co-pendency requirement. (If I’m missing some other difference, please educate me.)

Otherwise, the ability to file continuations IS GUARANTEED (see 35 USC 120).
Peter L.
February 25, 2020 05:43 pm
“What this view overlooks is that patent specifications typically contain lots of words…” Really??

1. ability to file continuations is not guaranteed. Remember director Dudas?

2. an invention was made; the application was examined; and a patent was issued. For some reason, the claims were held invalid. It is very reasonable to allow the applicant/inventor to address the errors. Nothing that was not disclosed can be claimed. The fabric of society, science and technology will not unravel if the inventor is able to obtain yet a valid patent on the invention. This current one-shot mentality is anti-inventor and pro-infringer.

3. my reasonable suggestion is to allow an applicant of an invalidated patent to file a continuation on the same spec. Hopefully, in the “lots of words” of the specification (I still find that funny) there is enough disclosure to repair. If the inventor is clever (or has a clever attorney), the new claims will be more focused on actual infringers. I expect that this will lead to more balanced discussions between patent owner and infringer. Besides costs, there is of course no real distinction between actually filing a sequence of continuations or allowing a continuation after invalidation.

4. I would expect that applicants would file the broadest possible claims. Ones that will be allowed and may be invalidated. Filing narrow claims under my proposal would just leave you with useless uninfringed claims that will likely not be invalidated and thus no continuation may be filed.

5. I would expect, in my own patents, that users who want to modify or customize an existing cryptographic method will take notice of my method and will be extremely careful in modifying underlying switching functions/devices. I loaded the spec (“a lot of words”) with sufficient structure, useful applications, quantified benefits and examples of customized cryptographic methods to cover my back if/when an attack will come, I hope. The spec by itself is a fair warning to potential infringers what I believe to be aspects of my invention.

I file continuations, because I need to. Considering what I developed, the extensive description, the examples provided, including Matlab programs that perform the transformation (called FLT), I feel that I have met, no exceeded the requirements to disclose and that I am entitled to a fair shot at protection. Not a one-shot shot that may go up in smoke.

Even then, I may not have (and most likely have not) anticipated all possible ways to invalidate my claims. For now I have to “buy” security by filing continuations. An unfair burden, I find, as potential infringers have almost unlimited opportunity to invalidate.
Anon
February 25, 2020 02:07 pm
angry,

What you “chose” is totally up to you.
What you “feel” is totally up to you.
What you “believe” is totally up to you.

But do not mistake YOUR choices in any of these things as matters of fact or law. Matters of fact and law are NOT totally up to you.

Just as on the “Shawn” thread, I state that I would fight for the right of Shawn to express himself, so too here, I would fight for the right of you to express yourself.

But you do NOT have the right to change a fact that HOW you are choosing to express yourself is exactly what is one of the things that the Efficient Infringer group wants.

The certainly “get” how you feel. What you don’t seem to get (predominately because as you have professed that you don’t care) is that YOU are being the t001 of the Efficient Infringers with your choices.

You can also choose to ignore the fact that I have explained this to you. That is entirely up to you.

But you cannot change that fact into being a non-fact. That is NOT up to you in any way, shape, or form.
angry dude
February 25, 2020 01:28 pm
@Anon

Dude,

You can talk all you want to your twin brother TFCFM or anyone else pretending that you care about “promoting the progress” and the fate of this used to be great country called USA…

I do not believe you for a second and I do not care anymore

What I care about is my family and my finances

And I will not put myself in this situation anymore – trusting crooked US patent system and corrupt wash dc critters regardless of titles they attach to themselves – presidents, senators, representatives, justices, judges… they are all corrupt crooks as far as I am concerned

Done with that sh1t

Fool me once – shame on you, fool me twice – shame on me
Night Writer
February 25, 2020 11:30 am
This is a naked attempt at crippling the patent system. I have quoted books used in the top engineering schools in the USA that state explicitly that functional language is used to express solutions to problems where there are many known solutions.

One skilled in the art understands functional language in this way. I have given examples where the number of solutions to some problems is vast, but known by a person skilled in the art.

I recently worked closely with a Ph.D. in EE. The invention has since been licensed for many millions to a large corporation. He said that if we limit the claims to any specific software/hardware solution, then they can be trivially designed around.

In this case, the new 112 is saying either list every known solution in your specification or your claims can be trivially designed around by just using one of the solutions not disclosed in your specification.

This is an outrage. It is an insult to the intelligence of every inventor and patent attorney in the country.
TFCFM
February 25, 2020 10:10 am
PL@#9: “The specification has already all the elements that can be claimed. A potential infringer can easily assess his/her risks in trying to circumvent or try to invalidate existing claims. You know how? By reading the specification!”

What this view overlooks is that patent specifications typically contain lots of words, many far more relevant than others (whether to what might be claimed or to what might have been dedicated to the public). A long line of legal precedent holds that subject matter that is disclosed, but not claimed, is dedicated to the public. Your proposed rule would overturn that precedent. Surely, Congress has the power to make such a rule, but it hasn’t.

A likely reason that Congress hasn’t (and won’t) overturn this rule is that it would likely have paralyzing effects on “progress in Science and the Useful Arts.” Under your proposed rule, nobody can possibly know the exact scope of claims which might someday (up to 20+ years after filing) issue from a patent application — even after one or more patents issue and the applicant ceases pursuit of any additional claims. Someone considering operating in the same general field of endeavor would therefore be unable to predict whether the applicant’s potential-future-patents (issuance dependent, as ever, on how poor an examiner is assigned) might cover the work the someone proposes to do. Given such uncertainty, investment risks sky-rocket and investment falls. Progress is inhibited.

Moreover, the rule you propose encourages patent applicants to obtain quick allowance of the narrowest, most ridiculously-non-infringable claim that is allowable — PRECISELY to generate the risk of who-knows-what-claims-might-someday-issue. Not a workable system, and certainly not one that’s going to promote progress.

As if these detriments weren’t great enough, the ‘benefit’ you seek (ability to file a continuation) is ALREADY available to every applicant whose application is allowed, and at a very reasonable price (not more than a few thousand $ for a few years of continuation-pendency).

I simply don’t see any scenario in which societal benefits of the rule you propose are not overwhelming outweighed by societal costs.
Anon
February 25, 2020 07:54 am
“Trade Secrets Only” is nothing more than a rallying cry of the Efficient Infringer.

As a life long student and practitioner of innovation, I understand that trade secrets have a pragmatic place in the real world — make no mistake about that.

But as is often the case, trade secrets are an enemy of the means of promoting innovation that simply should not be so callously abandoned.

Asking that more than mere emotion be applied, that critical reasoning be used to understand each of the current state, the various players in the current state, and their respective drivers, and why the oath of patents are in fact critical to protecting and promoting innovation is NOT too much to ask.

Additionally, it does not take too much critical reasoning to draw suspicion to someone that is emphatically would deny reason and rest solely upon emotion in order to advocate for a certain path.

It does not take much thought to see the internal inconsistency of ‘being enraged’ by a stated ‘unfairness,’ and then throwing reason to the winds and riling emotions that merely bring about a desired state of those same parties that ‘caused’ the unfairness in the first instance.
angry dude
February 24, 2020 05:59 pm
Peter L. @10

I see your problem.

My interest in cryptography is practical, as a consumer: protecting binary executables from unauthorized copying.
Some of the newer micro-controllers include things like hardware-enabled code and data encryption and secure boot.
I think this will work for me much better than trusting US patent or even copyright system
I will sell a gadget with the “brains” (algorithms) running on one of those micro-controllers
Let them figure out how it works. I wish them best of luck.
I have no trust in US patent or even copyright protection at this point
Trade secrets only.
Anon
February 24, 2020 05:28 pm
“ I also trust that ultimately rational thought and arguments will prevail. (that trust is a bit shaky though).”

I hear you.

Vigilance is the best defense against the abdication that those like angry will (and have constantly) advocated for.

Vigilance is necessary because there simple ARE competing philosophies out there and some of these competing philosophies fully align with “Rational Actor” reasonings.

Our law was always meant to be ‘innovation-type agnostic.’ As one who has studied innovation (with a minor in the history of science and technology), the reason why innovation protection must be provided with a wide open welcoming gate and a bare minimum of restraint is abundantly clear.

Peter, as your article delves into the (what should be undeniable) factual details, the entire aim against software innovation protection by way of patents ends up being merely being against patents in general and as a whole.

There is NO inte11ectually honest way to be for a patent system and be against software patents.

The question then becomes one of whether or not a strong patent system is desired — whether or not (for example), a patent system should feature BOTH carrots (rewards for the innovators) and sticks (penalties for infringers).

As a student of history, as a trained engineer, as a business manager of innovation, and as an attorney trained to protect innovation, I am most definitely bullish for strong patent protection systems — while also recognizing that this view is most definitely NOT universal.

Some wanting an alternative view are deeply sincere in their beliefs and fully willing to recognize both law and history (while still wanting change).

FAR too many though wanting an alternative view are simply NOT willing to be inte11ectually honest about ANY of facts, history, or the law.

This last group is especially pernicious.

THIS group is one for whom your article is an excellent piece.

However, others, are intent to NOT learn from your article. And then you have those willing to be played. Those who may well have legitimate feelings and issues and have come out on the short end of the stick in the ongoing poli-philo battle in regards to the personal property that a granted patent represents. Some such may NO LONGER be willing to even try (or care). Some others of such actually advocate for what one group or another against strong patent rights WANT.

No matter the reason, each of these ARE enemies of innovation (for various and quite possibly non-intersecting reasons).
Peter L.
February 24, 2020 01:41 pm
AD @1. The thought has occurred of course. But with Anon @2 and others, I still believe we should have a just, affordable and rational patent system and it is worth advocating for. I also trust that ultimately rational thought and arguments will prevail. (that trust is a bit shaky though).

Your comments in the past show you are familiar with cryptographic methods. As you know, security of these methods relies on intractability of an underlying problem (for instance intractability in factoring n=p*q in RSA). No one will apply a novel cryptographic method if it is not known how it works and why it is intractable. In that sense, keeping the method (which relies on a novel transformation that I invented) secret, is not practical. Which is one of the reasons why I want a just, affordable and rational patent system. And not one that tries to catch me on “abstract ideas”, “functional claiming” and other trivialia while a Matlab program is happily running the solution I invented.
Peter L.
February 24, 2020 01:22 pm
TFCFM @7. The specification has already all the elements that can be claimed. A potential infringer can easily assess his/her risks in trying to circumvent or try to invalidate existing claims. You know how? By reading the specification!

We have a system wherein an invention is protected by the claims in the patent. The invention in all its aspects has been done and fully disclosed and enabled. The claims may be invalidated when challenged. So be it. That does not change the fact that the inventor still has done the invention and has fully described it and should still be entitled to reasonable compensation.

For some reasons, a mistake was made and current claim(s) are invalidated. The continuation allows the inventor to potentially address these mistakes. Nothing has changed in the spec. No “better” invention than disclosed can be claimed. An inventor/applicant when confronted with new 102 art, may actually let go of the patent. On the other hand, an inventor may now know the angle of attack by opponents, and based on the same spec, file better and broader claims, but only after the original claims were invalidated.

There should be some risk involved for infringers to just attack claims to see if it sticks. An unreasonable attack thus backfires. Seems reasonable to me.
angry dude
February 24, 2020 11:03 am
Paul Morinville @5

I said “de facto” boycotting
We just need to make it “de jure” – official and public that is, and stick it to pto, congress, scotus and cafc critters
Sort of like public burning of patents but take it to the next level
TFCFM
February 24, 2020 10:45 am
I’ll take issue with one proposal:

PL: “An invalidated patent should be automatically entitled to at least a continuation. A patent should not be a one-chance crapshoot that may or may not survive a challenge.”

Every patentee is already entitled to file one or more continuation applications prior to issuance of their patent. Wise patent applicants already do this — all the more so when dealing with technologies, like trying to claim algorithms, for which substantial questions of patent validity exist.

The ‘price’ of keeping others wondering whether another (arguably “better” or more valid ) patent may someday issue surely justifies the ‘cost’ of maintaining such applications, it seems to me. Don’t want the cost? Don’t impose the price.
Daniel Hanson
February 24, 2020 08:43 am
Of interest may be the recent decision of Intelligent Automation Design, LLC v. Zimmer Biomet CMF and Thoracic, LLC, No. 2019-1100 slip op. (Fed. Cir. Jan. 30, 2020). Although a nonprecedential case, the opinion does summarize some older-but-still-valid precedential authority:

‘When describing microprocessor-implemented functions, the specification must “disclose an algorithm for performing the claimed function” on the microprocessor “in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.” Noah Sys., 675 F.3d at 1312 (quoting Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008) and Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).’
Paul Morinville
February 24, 2020 07:44 am
Angry dude, “(it’s already de facto boycotted by most small entities)”

Not really. A boycott is (v.) “withdraw from commercial or social relations with (a country, organization, or person) as a punishment or protest.” So it is voluntary and intended to cause some sort of action from the entity being boycotted.

That is not why inventors are not patenting. The true reason is much worse.

Inventors have lost faith in the USPTO.

Nobody believes that patenting will actually protect an invention. The cost of obtaining and then re-obtaining a patent in the PTAB is outrageous. The odds of the USPTO taking the patent back after the inventor has done everything right, paid them and invested in the invention so that the property can be transferred free of charge to a large infringer is almost 90%.

Inventors see the USPTO as part of a scam to steal the fruit of their mental labor.

They do not file patents because they know better. It is not a boycott.
Anon
February 24, 2020 02:33 am
And yet again, that is exactly what the Efficient Infringers want.

My oh my, is that how YOU are making ends meet?
angry dude
February 23, 2020 11:54 pm
Anon @2

Dude,

There is nothing to “celebrate” at this point

If you want to keep throwing good money after bad filing more patent applications – be my guest … agh, I forgot..you are a patent attorney… you just collect money from your clients… so naturally want them to keep filing patents…
Nope, dude !
Enough is enough
The US patent system is a sham and a racket and should be avoided like a plaque and boycotted by everybody (it’s already de facto boycotted by most small entities)
Anon
February 23, 2020 09:07 pm
Because “just quit” is exactly what the Efficient Infringers want…

Way to go, angry mouthpiece. Instead of celebrating the reasoning (and facts) provided, you want to rely yet again solely on emotion.
angry dude
February 23, 2020 05:14 pm
Peter,

Isn’t it simpler just to keep everything under trade secrets ?
Even just compiling your code to binary executable presents a major challenge if someone tries to reverse engineer and understand it
I’m not even talking about more radical ways like hardware enabled binary encryption-decryption
You still have copyright on your binary… intil Google destroys it too
Peace of mind and no patent attorney fees waste
To the morgue with US patent system