David Kappos, the director of the USPTO under President Obama from 2009 to 2013, recently called for congress to repeal section 101 of the patent act. Broadly his reasoning was three fold:
- The Supreme Court decisions of Mayo, Alice, and Myriad as interpreted by lower courts have made a mess of patent law and threaten protection of key American industries;
- Neither Europe or Asia have 101 and “they seem to be doing just fine in constraining patent eligible subject matter”;
- Section 101 adds nothing to patent law that cannot be better dealt with through applications of the novelty, obviousness, or written description standards.
According to Kappos, the current chaotic “I know it when I see it” 101 test that must be somehow consistently applied by thousands of USPTO examiners and hundreds of judges, means American inventors are better off seeking protection in China and Europe. While America “is providing less protection than other countries”, European countries are “putting their foot down in favor of innovation”.
A Call to Action: Removal of Section 101
In my next couple of blog posts I will be examining this call. First I will be looking at if section 101 should be removed (spoiler – the answer is yes), and in the second I will be looking at what the effect of removing 101 might be.
Removing 101 is a radical action. Such a radical action requires a radical need. The mess the Supreme Court has made of 101 supplies this radical need.
First, a Little Patent History…
Section 101 of the patent act was added in 1870 and amended in 1952. It states that “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor subject to the conditions and requirements of this title.” Discovers and invents – one of the most important things to note – are listed separately. This implies two important things: (1) inventing and discovering are two separate things, and (2) the results of BOTH processes are patentable. The Supreme Court has not, however, interpreted things this way. As early as 1852 in Le Roy v Tatham, the Supreme Court stated, “It is admitted that a principle is not patentable”. A principle was then defined to include such things as electricity or steam power. This was expanded by Funk Brothers when the word “principle” was changed to “phenomena of nature”, and added to electricity or steam were “the properties of metals”. Importantly, Le Roy v. Tatham was decided before the patent act of 1870, when 101 had not existed. No law included discoveries as patentable subject matter. Funk Brothers, however, was decided in 1948 long after the phrase, “inventions and discoveries” was included in the patent law. Still, according to the court “patents cannot issue for the discovery”. The addition of the word, “discovery” to the patent law was glossed over completely by the court. “Aggregation of species fell short of invention”; “The discovery of some handiwork of nature” is not patentable. This would certainly seem to fly directly against the inclusion of both invention and discovery in the American patent law, then and now. It is especially noteworthy that the text of the actual law was mentioned NO WHERE in Funk Brothers. It is certainly arguable that a case that ignores the statutory law and the constitution is a case that shouldn’t be followed. Nevertheless, the following of Funk Brothers has continued. In Diamond v. Diehr, the Supreme Court stated, quoting Diamond v. Chakrabarty, “A new mineral discovered in the earth or plant found in the wild” is not patentable. The law says inventions or discoveries are patentable. The Supreme Court says discoveries are not – and doesn’t even address how this ignores the written law. Rather the court seems to take a philosophical/policy position that works of “God” or “Nature” are unpatentable on its face. Interestingly in the cases have no real discussion of why this should exist. It is simply stated as fact.
This is inappropriate for several reasons. First, as already stated congress, where policy decisions such as this are appropriately made, made a different choice when it added the word discoveries to the patent law. Second, in dealing with the Barbary Pirates Thomas Jefferson was already portraying the United States, correctly, as a secular capitalist nation. Thus, the fact that the item was created by “God”, or “Nature” should be irrelevant. Third, as I mentioned in an earlier blog post, under current law, Nobel Prize winning discoveries are likely unpatentable. This is unacceptable. Discovering a natural product that was unknown before and finding a use for it takes as much creativity, knowledge, and work, if not more, than creating it yourself. The fact that the Nobel Prize winning discovery was made in China – where inventors are better off seeking protection – should be noted.
EnFishing for a Definition of “Abstract Idea”
Besides placing a 101 restriction on things created by “God” or “Nature”, the Supreme Court has placed a restriction on the patenting of abstract ideas, even though it has been completely unable to define what makes an idea abstract. The recent Federal Circuit case Enfish highlights this. In Enfish, the Federal Circuit surprised many by applying the Supreme Courts most recent abstract idea ruling, Alice, to uphold a software patent. Since the patent was held to “improve the function of a computer” rather than simply add “conventional computer components to well-known business practices” the patent was held not to be abstract. How the above relates to making a patent specific as opposed to general, the meaning of abstract, is impossible to fathom.
An obvious, simple, change is already non-patentable under 103. Though law often uses words differently and more precisely than everyday speakers such wholesale disregard for the meaning of a word and the conflation of different parts of a law should not be tolerated. It does though confirm the unworkableness of the standard.
Let’s Make America Bold Again!
Finally 101 should be removed because limiting patentability is not the way to boldly win the future. The countries that innovate will be the countries that win. People will not innovate if no rewards for innovations exist. Weakening the patent system weakens the rewards for innovation when we need to be increasing them and encouraging people to spend the grueling hours in the laboratory or the machine shop it takes to come up with the next big thing. The next Apple or Microsoft being developed in North Korea or China rather than America would be unlikely to have the devastating affects portrayed in Homefront but losing the innovative edge and becoming economically dominated by other countries is how modern countries die. This is why people talk about Singapore, India, and China– but do not talk about the growing power of Canada or France.
Join the Discussion
39 comments so far.
Night WriterJune 25, 2016 09:06 am
Let’s review Edward’s behavior: 1) Pontificates about patent law, but will not make predictions on the outcome of cases –I do and get right; 2) Will not respond to controlling law, i.e. the portion of Bilski I quoted above that was signed onto by 5 justices; and, 3) Continues to make misrepresentations about science and technology. I think the reality is that what we have is this class of attorneys that are pandering to a group of clients with these arguments. I know that Edward’s tripe is pretty close to what R. Stern (the infamous source of Benson) spouts and just like R. Stern he runs and hides from any real argument and comes up with some twisted argument about science to justify his position (e.g., gee aren’t a stereo and computer exactly a like. Answer to any rational person: no. See the Turning Theorem.)
AnonJune 24, 2016 03:03 pm
Once again Mr. Heller, your “spiel” is rather unconvincing because you attempt to NOT pay attention to what happened in 1952.
There is no plainer way to put this: you are wrong.
Further, you should know (as an attorney) that you are wrong, and that your form of advocacy here is not proper.
It is not as if you are recognizing controlling law and advocating for a change – you are actively misrepresenting controlling law in order to bolster a desired view of how you would rather have the law to be.
AnonJune 24, 2016 01:27 pm
You response is disingenuous.
Would you apply the same “logic” to ALL medical methods following Prometheus?
Indeed, I am more than aware that this dissembling tactic was brought to your attention ever since those cases came out.
Your words regarding any aspect of “business methods” suffers from your over-eager following of your own personal philosophies to the exclusion of the actual history, facts, and law on the matter.
Edward HellerJune 24, 2016 01:14 pm
Rule Britannia, Britannia rule the waves!
Back on topic.
Compare an American vacationing in Brazil in the forties. While in Rio, he sees sail boards cruising back and forth just off the beaches. Returning home, he files for and obtains a patent on sail boards.
The same American, visits the Amazon and finds the native tribes using a particular compound to cure blindness. He returns to America and patents the compound disclosing its use for curing blindness.
The same American observes monkeys using a particular compound to cure wounds. He files for and obtains a patent on the compound for curing wounds.
Why should not this American be able to obtain patents on either the sail board, the blindness-curing compound or the wound-curing compound.
step backJune 24, 2016 01:03 pm
“They looked to England.”
In other words, it’s time for AXE-IT.
(American exit from high tech and IT) 😉
Edward HellerJune 24, 2016 12:24 pm
On business methods: as I said, historically they were not considered patentable subject matter independent of the means.
On Bilski, it remains that not every process is patentable, just like that not every Art was patentable. Bilski is an example of this truism. Ditto, Flook and Benson which held processes unpatentable.
So, just saying that such and such is a process says nothing at all about its status as patentable subject matter. Only some processes are patentable subject matter. The question is which, and why.
Now for that, I harken back to the original intent of Congress in 1790. They looked to England. We all might read up on the original intent by reading Curtis.
Edward HellerJune 24, 2016 12:11 pm
anon, I quote history on 101 showing that new is a requirement independent from known or used. I then quoted the Supreme Court in Myriad. That holding is that a product of nature is not a new composition though previously undiscovered. Very consistent with Jefferson’s view.
Night WriterJune 24, 2016 09:24 am
@29, 30 anon. This codification stuff is pushed by the justices. Shameful. The real tragedy in Bilski is the defection of Scalia. Had he joined the other parts of the decision all this nonsense regarding business methods would be over.
But, the biggest thing about “business methods” is the way the judicial activist try to expand the definition to include all information processing. It is just ridiculous.
Some how a machine that identifies tumors or drives a car is a business method? A fundamental misunderstanding of science.
Night WriterJune 24, 2016 07:10 am
Notice that Edward never responds to @21 and @22. Just dodges and continues to misrepresent. Reprehensible.
AnonJune 24, 2016 06:48 am
When people say “any process is a process” they reflect another change made in 1952 with the introduction of a specific definition of process.
Mr. Heller is also guilty of attempting to whitewash away this deliberate action in his attempts to say that the Act of 1952 was merely codification.
The Act of 1952 was clearly NOT merely codification, no matter how many times that mis-truth is attempted – nor by whom it is attempted.
35 USC 100(b) clearly sets the definition of process to be more than “Arts” as Ned would attempt to paint with his re-writing of history.
The pure words of Congress:
(b) The term “process” means process, art, or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material.
That process includes this historical view is reflected in the sound-byte, non-critical reading that at first blush appears circular – and critically expands upon that.
With emphasis added then:
(b) The term “process” means process, art [which references the sum total that Ned would attempt to revise the At of 1952 in his image], OR method, AND includes a new use of a known process, machine, manufacture, composition of matter, or material [which is clearly the more modern day version of method, and which liberates the category from ANY sense of being a mere sub-category to the hard goods categories – it is this critical and purposeful change in 1952 that most damages the desire to place Machine or Transformation as anything more than just a clue, and that places “process” at NOT just “Art” but “new use of” even known items.
One only has to note how Ned disappears from any conversation of the law when this point is brought up to see that instead of an inte11ectually honest dialogue, he is only interested in peddling his “version” of how he would rather the law to be (and eliminating the changes made by Congress in 1952).
AnonJune 24, 2016 06:33 am
Night Writer @ 21,
I have it from inside sources that Stevens lost his position of writing the majority opinion in Bilski because he would not relinquish his beliefs – regardless of what the actual words of Congress in § 273. It is not without irony that of the Justices who have commented that 101 should not be treated as a nose of wax, Stevens would have gladly done exactly that.
It should also be noted that the number of Justices that would have done so has slipped from the 4 down to 3, so even with a panel of 8, that view still would not be able to change the law as written by Congress,
Mr. Heller @ 20 – as I suggested, do not tell anyone that they do not know the law of jurisdiction stripping if you cannot bother to be familiar with the concept yourself. It is only those matters of original jurisdiction that cannot be stripped from the Supreme Court. Patent appeals are not a matter of original jurisdiction of the Supreme Court.
AnonJune 24, 2016 06:25 am
Curious @ 23,
As has been pointed out to Mr. Heller, if business methods were not already a statutory item, then Congress would not have needed to carve out a special exception for a subset of business methods as they have done. All that Congress need to have done would have been to state that no exception was necessary because one does not need an exception to something that cannot be eligible anyway.
For Mr. Heller to continue to advocate that the law is one thing when surely – and objectively – he must understand all of the counterpoints presented against that ideology must be dealt with in an honest manner. But to clench tight one’s eyes, to bury one’s fingers in one’s ears, and to chant the same mantra over and over and over as if these counter points simply do not exist, well, that is most unfortunate for any forum concerned with the dialogue of law.
AnonJune 24, 2016 06:17 am
Way back at post 1 you offer your historical treatment of “new.”
I will grant you that you have fashioned an interesting tale of this concept, one that of course aligns with your larger objectives against business methods and software patents, and attempts to incorporate the Court’s nose mashings.
However, I would be remiss if I did not share something that I stumbled upon awhile back that I has bookmarked for the next time that you attempted to redefine the law in your own image regarding this “new” take of yours.
“Section 101 states three requirements for patentability: novelty, utility, and statutory subject matter. 18 Of these three requirements, however, only utility and statutory subject matter are applied under section 101.19
18. See note 4 supra for the text of § 101.
19. That the novelty of an invention should be considered under § 102 and not under § 101 is the apparent intent of Congress. A reviser’s note accompanying § 101, when it was enacted in the 1952 Patent Act, stated: “The corresponding section of the existing statute is split into two sections, section 101 relating to the subject matter for which patents may be obtained, and section 102 defining statutory novelty and stating other conditions for patentability.” H.R. REP. No. 1923, 82d Cong., 2d Sess. 6 (1952); S. REP. No. 1979, 82d Cong., 2d Sess. 5 (1952). In Bergy, the court noted that “[tlhe PTO, in administering the patent laws, has, for the most part, consistently applied § 102 in making rejections for lack of novelty. To provide the option of making such a rejection under § 101 or § 102 is confusing and therefore bad law.” 596 F.2d at 961, 201 U.S.P.Q. at 361. The court in Bergy also noted that there have been only two instances where the PTO has made rejections for lack of novelty under § 101. Id., citing In re Bergstrom, 427 F.2d 1394, 166 U.S.P.Q. 256 (C.C.P.A. 1970); In re Seaborg, 328 F.2d 996, 140 U.S.P.Q. 662 (C.C.P.A. 1964).”
Last accessed 05/08/2016 from http://via.library.depaul.edu/cgi/viewcontent.cgi?article=2401&context=law-review
Night WriterJune 23, 2016 08:46 pm
And Edward, from what I’ve seen of you, you get indignant because you can’t answer my arguments. Stop getting on blogs and misrepresenting the law and technology.
Night WriterJune 23, 2016 08:36 pm
I guess we have crocked Hillary and lyin’ Edward.
Night WriterJune 23, 2016 08:34 pm
And, in fact, Edward is there an ethical issue with ignoring controlling precedent and yapping misrepresentations the way you do. Why don’t you grow up and try to have a real legal discussion on a blog where you are not making misrepresentations. I respect the opinion that business methods shouldn’t be patent eligible if made in the context of changing the law.
CuriousJune 23, 2016 08:31 pm
I am only giving you the history of the statutes and the law has been somewhat steady on the topic of business methods
I’m not interested in what long-dead judges think of technology that they would have no clue of understanding. Both the law and technology have evolved over the centuries — don’t get stuck in the past. BTW — somewhat steady steady. Rather somewhat steady = inconsistent.
If business methods are going to become patentable subject matter
They ALREADY are patentable subject matter. Come on Ned — let’s make this an intellectually honest discussion. If they weren’t, the concurrences in Bilski and Alice would have been the majority opinions.
Finally, I see you that you again dodge the question as to why we should carve out a large portion of our technology-based economy from enjoying the benefits of patent protection. Again, I’m not holding my breath for a response, but that doesn’t mean I won’t continue to call you out for failure to put forth a reasonable policy position that answers the question.
Night WriterJune 23, 2016 08:29 pm
There are many scholars (real ones not Lemley type) that disagree with Edwards misrepresentations.
I wish the likes of Edward would admit that what he wants is legislation to get his way. At least that is respectable. This nonsense of ignoring controlling law and the Constitution is hard to witness.
Night WriterJune 23, 2016 08:16 pm
Let’s see what the SCOTUS held in Bilski and compare it to Edward’s misrepresentations.
Section 101 similarly precludes the broad contention that the term “process” categorically excludes business methods. The term “method,” which is within § 100(b)’s definition of “process,” at least as a textual matter and before consulting other limitations in the Patent Act and this Court’s precedents, may include at least some methods of doing business. See, e.g., Webster’s New International Dictionary 1548 (2d ed.1954) (defining “method” as “[a]n orderly procedure or process . . . regular way or manner of doing anything; hence, a set form of procedure adopted in investigation or instruction”). The Court is unaware of any argument that the “`ordinary, contemporary, common meaning,'” Diehr, supra, at 182, 101 S.Ct. 1048, of “method” excludes business methods. Nor is it clear how far a prohibition on business method patents would reach, and whether it would exclude technologies for conducting a business more efficiently. See, e.g., Hall, Business and Financial Method Patents, Innovation, and Policy, 56 Scottish J. Pol. Econ. 443, 445 (2009) (“There is no precise definition of . . . business method patents”).
The argument that business methods are categorically outside of § 101’s scope is further undermined by the fact that federal law explicitly contemplates the existence of at least some business method patents. Under 35 U.S.C. § 273(b)(1), if a patent-holder claims infringement based on “a method in [a] patent,” the alleged infringer can assert a defense of prior use. For purposes of this defense alone, “method” is defined as “a method of doing or conducting business.” § 273(a)(3). In other words, by allowing this defense the statute itself acknowledges that there may be business method patents. Section 273’s definition of “method,” to be sure, cannot change the meaning of a prior-enacted statute. But what § 273 does is clarify the understanding that a business method is simply one kind of “method” that is, at least in some circumstances, eligible for patenting under § 101.
A conclusion that business methods are not patentable in any circumstances would render § 273 meaningless. This would violate the canon against interpreting any statutory provision in a manner that would render another provision superfluous. See Corley v. United States, 3229*3229 556 U.S. ___, ___, 129 S.Ct. 1558, 1566, 173 L.Ed.2d 443 (2009). This principle, of course, applies to interpreting any two provisions in the U.S.Code, even when Congress enacted the provisions at different times. See, e.g., Hague v. Committee for Industrial Organization, 307 U.S. 496, 529-530, 59 S.Ct. 954, 83 L.Ed. 1423 (1939) (opinion of Stone, J.). This established rule of statutory interpretation cannot be overcome by judicial speculation as to the subjective intent of various legislators in enacting the subsequent provision. Finally, while § 273 appears to leave open the possibility of some business method patents, it does not suggest broad patentability of such claimed inventions.
Edward HellerJune 23, 2016 08:00 pm
anon, I can assure you that you do not know what you are talking about in reference to the Supreme Court and its jurisdiction. Besides, the court itself will decide whether Congress can cut it out of reviewing patent matters decided by the lower courts. I can only guess what that decision might be.
Edward HellerJune 23, 2016 07:57 pm
Paul and Curious, I am only giving you the history of the statutes and the law has been somewhat steady on the topic of business methods. Not all process are patentable under 101 and the Supreme Court has always been clear on that.
If business methods are going to become patentable subject matter, they are going to need legislation I would suggest that given the enormous hostility to business methods in Congress at present, I do not think reform statute would pass.
Now, that being said, if the patent were limited to improved software methods for implementing business methods, see Versata, then I think there may be a good argument for their patenting without any new legislation.
Night WriterJune 23, 2016 06:40 pm
@13 Edward:: you imaginary history does not agree with various accounts of the history by the SCOTUS.
Night WriterJune 23, 2016 06:38 pm
@12 anon:: I agree that the SCOTUS could be removed from patent law jurisdiction.
Night WriterJune 23, 2016 06:24 pm
@15 curious:::: Ned, Business process patents are, well, processes. 101 says ANY process is patentable subject matter.
Ned ALWAYS glosses over this important point. Besides, why must today’s law be hamstrung by what was thought to be patentable several centuries ago?
The big difference is that now technology is part of the business method and intertwined with the innovation. As to Ned, he is intellectual dishonest. As him to tell you the one about the ROM.
CuriousJune 23, 2016 05:44 pm
Ned, Business process patents are, well, processes. 101 says ANY process is patentable subject matter.
Ned ALWAYS glosses over this important point. Besides, why must today’s law be hamstrung by what was thought to be patentable several centuries ago?
For the very reasons you described in post #11, business methods are the foundation of a very important (and high-growth) portion of our economy. Business methods (whatever that actually means) requires such as much technological expertise and innovation as the vast majority of other inventions I have seen.
IMHO, if your best argument on is that judges several centuries ago decreed this wasn’t patentable subject matter then you have a lousy argument. Ned, don’t outsource your critical thinking to someone long dead and who would have considered today’s technology to be akin to magic.
Ned — do your own thinking and come up with your own reason why we should carve out a large portion of our technology-based economy from enjoying the benefits of patent protection. If you ever engage in that exercise (trust me, I won’t hold my breath), you’ll find that whatever argument you come up with could be applied to technology that you think should be patent-eligible subject matter.
Paul MorinvilleJune 23, 2016 05:23 pm
Ned, Business process patents are, well, processes. 101 says ANY process is patentable subject matter.
Does that not mean that business processes require legislation to remove them from patent eligibility?
Edward HellerJune 23, 2016 05:05 pm
Paul, Why are business methods not patentable subject matter?
Let me first agree that one can invent new business methods.
But the problem is statutory — as the first patent statutes were effectively based on the Statute of Monopolies of 1624 that authorized patents on inventions of new manufactures and on the common law cases after 1624 that had interpreted just what a manufacture was. By 1793, this case law had extended patentable subject matter to machines, compositions and the Art of making manufactures. The case law from 1793 to 2016 has not extended the original subject matter that was patentable under the 1793 Patent Act one iota. If the subject matter is not effectively a new manufacture or the Art of making something, it is non statutory. We do not even have to get to the constitution.
Historically, business methods were not deemed to be patentable as an Art; and thus were patentable only in combination with novel means. I think you can see that this historical paradigm is now being followed by Alice.
So the problem remains with Bilski in using Abstract in a sense unsupported by the prior case law.
Thus if we want to have business methods as patentable subject matter, we are going to have to add them to the statute. Then the issue would become whether business methods are within the useful Arts because Congress does not have the authority to grant patents generally, only to subject matter that will advance the useful Arts.
AnonJune 23, 2016 04:32 pm
Before you state that someone does not understand something, you should make sure first that you understand that subject.
Jurisdiction stripping is entirely possible for matters that are not belonging to the original jurisdiction of the Court.
Patent appeals do NOT belong to the original jurisdiction of the Court. Taking cases on petition has ZERO to do with the legal concepts involved here.
When you preach in a condescending manner – and are simply dead wrong in what you are preaching (and this can be easily verified by a simple understanding of the legal concepts involved), you come across even worse than simply being mistaken.
Yes, as currently set up, the top Article III court would be the Federal Circuit, and yes, as that group has been currently trained, the results would not be much better at all.
So there would be a necessary additional step of retraining, or perhaps more efficiently, a step of creating a new specialized Article III court untainted by the brow-beating of the Supreme Court.
The reason for this court to be an Article III court would be to satisfy the judicial branch function, as laid out in Marbury v Madison. I am sure that Mr. Heller is aware that in that case the Court did NOT say that it was the Supreme Court itself that had that power of judicial review, but was instead the judicial branch.
Paul MorinvilleJune 23, 2016 04:00 pm
Ned, Why are business methods not patentable? Is the patent system solely for technology? Or is it to create a property right that can attract capital to startup new companies that create our jobs?
Online businesses largely require a critical mass of customers to stay relevant. They can do this in a number of ways. A strong brand is one way, such as Google search or Amazon. Another is a social network like Facebook.
If you have a great idea to do something online, you need to generate a brand or a network effect. To do either, you need money and most of that money is spent on marketing to drive new customers to your site. The problem is that without a patent, there is nothing to leverage to attract enough money to market your company. If you attempt it without money, it is possible to slowly attract a critical mass of customers but some company with more money than you can do it much faster and thus kill your company and all the you have invested.
In today’s online world, patents are absolutely critical to attracting funding to compete with the likes of Facebook or Google in capturing a critical mass of customers.
If we say that patents must be solely for technical inventions and not business processes, we effectively grant the multinational incumbents the future of online based companies because we eliminate competition.
Ned HellerJune 23, 2016 03:39 pm
Anon, I was trying to think of a legislative fix for Bilski. What we really want is for the Supreme Court only to invalidate claims under 101 that are truly not within the four classes, not because their claims are overbroad so that they are claiming at the level of an idea. Without defining “abstract,” the lower courts, but not the Supreme Court, are wandering just a bit.
Enfish, to me, was a major step forward. But since Kappos is still complaining, methinks he wants to patent business methods.
Edward HellerJune 23, 2016 03:34 pm
Paul, you must be aware that Congress cannot strip the Supreme Court of its authority to review judgment of the lower courts, both US and State Court? They long ago held that.
The Supremes take cases on petition, not appeal. Anon does not understand that.
Paul MorinvilleJune 23, 2016 02:27 pm
Anon, Stripping the Supreme Court of jurisdiction over patent law would then position the CAFC as the end of the line, would it not? If that is the case, how would that help? That court is currently stacked with anti-patent activists and Google shills. There must be a better way. Or perhaps I do not understand what stripping jurisdiction would mean.
AnonJune 23, 2016 01:05 pm
Mr. Heller @2,
I cannot help but notice the selectivity you are displaying here as to “101” and wanting to take a portion and gear it to 112 instead.
I find it odd that you cannot (and choose not to) apply that same line of thought to 103 and the elimination of the judicial power to define “invention” through the power of common law evolution that existed prior to 1952.
I find these lapses of yours to diminish your persuasiveness tremendously – in all areas.
Night WriterJune 23, 2016 11:35 am
And I note that Edward Heller is a coward in that he will not predict the outcome of cases.
Night WriterJune 23, 2016 11:35 am
Edward Heller — you are just—flatly–not an intellectual honest person and should not be read. I have pointed out many times your intellectual dishonesty. Your posts are a waste of space as one never knows what misrepresentation you have thrown in there. Too much work to read your garbage.
Night WriterJune 23, 2016 11:33 am
This is essentially right. I have had a challenge out for years for anyone to come up with a couple of claim sets that needed 101 or the “judicial exceptions” to reject instead of 102/103/112. No takers. What we deal with instead is arrogant ignorant judges that make some vague reference to some vast set of claims that need 101 and the “judicial exceptions” and yet cannot name one set of claims.
AnonJune 23, 2016 10:57 am
The problem is a Supreme Court that thinks itself to be above the law.
Changing the law is just not going to help with that problem.
There is only one solution: jurisdiction stripping.
Edward HellerJune 23, 2016 08:57 am
Mr. Cole, may I also suggest that I agree with you that “principles in the abstract” has nothing to do with patentable subject matter under 101 because that is limited primarily to whether patentable subject matter comprises a new or useful manufacture (I include within manufacture machines, compositions and Arts). As better described by O’Reilly v. Morse, the prohibition of patenting principles-in-the-abstract had to do with requirements of what then was the analog of section 112 that required the applicant to describe and enable his invention. If he were claiming a principal in the abstract, he would not even have to invent any way of carrying out that idea. That is what the Supreme Court actually said in Morse.
The Supreme Court really screwed the pooch in Bilski when it came up with the idea that the problem with business methods was not that they were not manufactures, but that they were abstract in the sense that they were claiming at the level of an idea. Of course the Bilski claims were not claiming an idea. But they were claiming subject matter that was not within the four classes.
What to do about Bilski? So long as the courts continue to apply that case in a way that is consistent with excluding from patentability subject matter that is not within the four classes, that I think we have no concern. Further, to the extent that the courts exclude from patentability subject matter that is claimed only at the level of an idea, with no details of practical implementation, then we have no problem. But to the extent that Bilski becomes an arbitrary tool of the courts to set aside patents they do not like because they do not like the people wielding them (trolls), then we do have a problem.
Edward HellerJune 23, 2016 08:47 am
Mr. Cole, in 1790, the then analog of 101 included “discovery,” and patentable subject matter was effectively limited to manufacturers and Arts. In 1793, in the revision authored by Thomas Jefferson, “discovery” was dropped and “new” was added. As well, compositions were added. Taken together, the patent law of 1793 would allow the patenting of “new compositions.” It would not allow the patenting of the discovery of compositions regardless of whether they were new or not.
Cycle forward to the present day. The Supreme Court in Myriad essentially held that isolated DNA was not patentable because it was a product of nature and products of nature were not patentable subject matter because they were not “new compositions.” Effectively the Supreme Court continues to read the patent act is not allowing the patenting of existing compositions regardless of whether they are discovered. This carries out Thomas Jefferson’s design.
Now as to whether it would be better policy to allow the patenting of existing compositions newly discovered, the question is better asked as to who owns nature?