The Death of Invention

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George Santayana is attributed with the aphorism: “Those who cannot remember the past are condemned to repeat it.”

This is modern § 101 in a nutshell.

Every horror we in the patent community are now experiencing under Alice/Mayo isn’t new, but a repeat of a drama played out long ago.

Every great horror story has a monster.  In the Friday the 13th franchise, the monster was Jason Voorhees who would just not die regardless of the endless violence committed upon him.  Arnold Schwarzenegger’s Terminator was another monster that just would not die.  So was Glenn Close (to a lesser extent) in Fatal Attraction as, in the final scene, she leapt from the illusion of death to attack Michael Douglas with a most wicked blade.

In the patent world, the monster is “invention.”

Stab in the heart, sprinkle it with holy water, burn it and then warn the country never to even whisper the word in endless congressional reports and law review articles.  It doesn’t matter.  Invention . . . just . . . won’t . . . stay . . . dead as is evidenced in Mayo Collaborative Services v. Prometheus Laboratories, Inc. where the nine most powerful jurist-priest resurrected the word in order to save the patent community from itself.  “[T]o transform an unpatentable law of nature into a patent-eligible application of such a law, a patent . . . must limit its reach to a particular, inventive application of the law” (emphasis added).  Mayo, slip op. at p. 1.  A “process that focuses upon the use of a natural law [must] also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to signifi­cantly more . . .” (emphasis added).  Id. at p. 3.  The claims in Diamond v. Diehr “transformed the process into an inventive application of the formula” (emphasis added).  Id. at p. 12.  “[T]here was no ‘inventive concept’ in the claimed application of the [Flook] formula” (emphasis added).  Id. at p. 13.  The claims in Nielson explained “how the principle could be implemented in an inventive way” (emphasis added).  Id. at p. 14.

Inventive concept? Inventive application? Inventive way?

The Supreme Court is clueless as to the meaning of these words.  Then again, the Supreme Court doesn’t need to admit it.  The Supreme Court has the privilege of using the words, then demand that the lower courts figure out what these words mean. That is precisely what they have done time and time again.


It’s good to be the king, even if the king has no clothes.

While the Federal Circuit has failed miserably to address the word “invention,” the Federal Circuit’s failure is not due to any lack of intellect or wisdom.  To the contrary, the Federal Circuits’ only failure springs from excessive hubris to believe that it can address invention.  Presently, Federal Circuit judges are circling the wagons thinking that “invention” means some form of advantage, and not just any advantage, but some form of advantage so impressive that, depending on the day, they say “wow, that’s just an impressive advantage worth a patent.”

However, the word “invention” and its derivatives lack clarity.  So much clarity that near the end of the nineteenth century, the Supreme Court admitted in McClain v. Ortmayer, 141 U. S. 419, 427 (1891) that “the word cannot be defined in such manner as to afford any substantial aid[.]”

So much clarity that, in the middle twentieth century, Congress and vast numbers of prominent attorneys and legal organizations conspired to once and for all rid the country of the word as it pertained to patents by codifying the 1952 Patent Act.

In drafting the modern patent law, Congress absorbed as much input as possible from patent legends, such as Giles Rich and P. J. Frederico.  All this is well-outlined in Efforts to Establish a Statutory Standard of Invention: Study of the Subcommittee of Patents, Trademarks, and Copyrights of the Committee on the Judiciary, United States Senate; Eighty-fifth Congress, First Session pursuant to Senate Resolution 55, Study No. 7 (published 1958) (hereinafter “the 1958 Study”).

As stated on page 2 of the 1958 Study, Charles F. Kettering, who headed the National Patent Planning Commission remarked: “One of the greatest technical weaknesses of the patent system . . . is the lack of a definitive yardstick as to what is invention.”

On page 4 of the 1958 Study, patent legend Giles Rich remarked about the difficulty of overcoming the idea of invention concluding “[s]o long as invention is there they can say it isn’t good enough to be an invention.”

These words are so relevant today that they deserve repeating – underlined and in bold.

So long as invention is there they can say it isn’t good enough to be an invention.”

Keep this phrase in mind, because at the end of the day the 1952 Patent Act was codified to remove “invention” as a prerequisite to patentability.  In fact, 35 U. S. C. § 103 is based upon the Supreme Court’s decision in Hotchkiss v. Greenwood, 11 How. 250, 253 (1850), which held that “if no more ingenuity and skill was necessary to construct the new knob than was possessed by an ordinary mechanic acquainted with the business, the patent was void.”  That is, Congress wrote the modern patent law to replace invention with the imperfect, but much preferable, metric of one of ordinary skill in the art.

While the courts and the patent gentry now constantly talk about what the word “invention” means, there is vigorous disagreement as to the word’s meaning.  This isn’t new either.  As Giles Rich noted in The Principles of Patentability” (Journal of the Patent Office Society, Vol. XVII, No. 2, pp. 87-8 (February 1960)):

“It has generally been stated to be the law that, in addition to being new and useful, an invention, to be patentable, must involve ‘invention.’  Merely to state that proposition, in the absence of an initiation into the mysteries, sounds ridiculous. A neophyte might well ask, ‘What do you mean, an invention must involve invention?’ The sophisticates would answer saying, ‘Invention,’ the Supreme Court has held ‘cannot be defined.’ It is ‘that impalpable something’ which you must have to get a patent. Experienced patent lawyers, the Patent Office, and the courts understand ‘What it means, only they never agree.’’

[There are] various meaningless phrases which have been used to express this essential mystery-something akin to a religious belief[.] . . .

In the final analysis . . . [the] requirement for ‘invention’ was the plaything of the judges who, as they became initiated into its mysteries, delighted to devise and expound their own ideas of what it meant, some very lovely prose resulting” (internal citations omitted).

By all appearances, Judge Rich’s biting commentary on the word “invention” – and the courts that used the word as if they knew of what they spoke – is the fruit of the exact same frustration every modern patent attorney feels today.

The key to addressing the issue of invention, however, is to know six things.

The first thing to know is that patentability and invention are two separate things.

The second thing to know is that the word “invention” has no useful meaning in patent law, and that the 1952 Patent Act and the America Invents Act express the prerequisites to patentability “without any reference to a requirement to reference of ‘invention’ as a legal requirement.”  The Principles of Patentability at p. 89.  “[T]he drafters did this deliberately in an effort to free the law and lawyers from bondage to that old and meaningless term[.]”  Id.

The third thing to know is that Article I, Section 8, of the United States Constitution granted to Congress, not the courts, the exclusive power to regulate patent law.  To this end, Congress enacted the 1952 Patent Act so as to dispense with “invention” and determine patentability in terms of nonobviousness under 35 U. S. C. § 103.  Id.

The fourth thing to know is that the 1952 Patent Act amended what is now § 101 to recite: “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.”  Relevant to the word “process,” Congress expressly defined the word in § 100 (b) as follows: “The term ‘process’ means process, art or method, and includes a new use of a known process, machine, manufacture, composition of matter, or material” (emphasis added).  Relevant to this fourth thing to know is that, assuming a software claim cites use by a computer and passes muster under § 102, § 103 and § 112, such software claim is exactly a new use of a known machine.

The fifth thing to know is that, while it is fully within the courts’ powers to identify exceptions under § 101, it is not within the courts’ powers to de facto or de jure rewrite or ignore a single word of the statutory patent laws through de jure means, or to replace congressional intent with biases that the courts feel better suited to patent law.  That is, it is not within the constitutional powers of the courts to place a single additional burden on patentability that Congress has not approved.

While courts may interpret particular words in view of congressional intent, the Supreme Court has repeatedly declared that “[u]nless otherwise defined, ‘words will be interpreted as taking their ordinary, contemporary, common meaning.’” Bilski v. Kappos, slip op. at p. 10 (citing Diehr, 450 U. S. at 182).  “Our task . . . is the narrow one of determining what Congress meant by the words it used in the statute; once that is done, our powers are exhausted.” Diamond v. Charkrabaty, 447 U. S. 303, 318.

The sixth thing to know is that, while the Supreme Court resurrected the old “invention” monster of legend, it is within the Federal Circuit’s power to “tread carefully in construing” the term “invention,” as the Supreme Court actually commanded the lower courts to do in its Alice Corp. v. CLS Bank decision.  See, Alice Corp., slip op. at p. 6.  Accordingly, assuming that a patent claim addresses more than an idea in of itself, the Federal Circuit is obligated to ignore any reference to “invention” and look to nonobviousness under § 103 as the “something more” to establish patent eligibility.

Ultimately, the Supreme Court asked the wrong question when deciding Mayo.  The real question it should have addressed is: “are the additional steps at issue obvious to one of ordinary skill.”  Yes, Mayo should have been addressed under § 103, not § 101.

Unfortunately, there is no clear standard bearer to fight the invention beast in this modern era.  The great Giles Rich has passed.  The great P. J. Frederico not only passed, but even his name has passed from legend.  The vast majority of patent practitioners are unwilling to raise their voice beyond angry, incessant grumblings in the hallways after an unfavorable PTAB decision.  All that remains is a hope that enough of the patent community will come together and file amici curae time and time again until invention is declared dead once more.

Doubtless invention will not stay dead.  It never does.  However, that will be the problem of a future generation foolish enough to once again resurrect it.


Image Source: Deposit Photos


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Join the Discussion

23 comments so far.

  • [Avatar for Anon]
    September 7, 2018 08:52 am

    “Just impressive” == Flash Of Genius

    Act of 1952 anyone?

    (and one guess as to which one body has done more harm to that Act than any other — and no, it is not the CAFC)

  • [Avatar for B]
    September 7, 2018 12:08 am

    @ Jianqing Wu “The quoted line ‘wow, that’s just an impressive advantage worth a patent…’ reflects patent extremism. The U.S. patentability standard is extremely unrealistic.”

    It is the present standard adopted by the Federal Circuit.

  • [Avatar for Jianqing Wu]
    Jianqing Wu
    September 6, 2018 11:57 am

    It is a great article.

    The quoted line “wow, that’s just an impressive advantage worth a patent…” reflects patent extremism. The U.S. patentability standard is extremely unrealistic.

    The invention standard reshaped by patent “reformers” (really patent destroyers) can be characterized as “first one in the world”, further enhanced by massive rejections by the PTO broadest and ABSURD interpretation rule and arbitrary citing of references, further enhanced by massive invalidation by the PTO death squads and federal death squads, further enhanced by additional invalidation by federal courts on overwhelming grounds…. What is it? The probabilities of getting an enforceable patent for the entire term is like the odds of getting double lightening strikes. When judges are out of mind, the result is insane.

    At the same time, the courts have done so much to destroy patent enforceable rights: U.S. patents have NO licensing values, trivial selling value ($120k average for a few having commercial values), and free for use by infringers. After inventors contribute INVENTIONS, pay a massive amount of prosecution fees, a huge amount of attorneys fees, invalidation defense fees, etc., all rewards they will get is nothing or even litigation fees liabilities. Can anyone make a good argument that patent is not a scam in violation of the U.S. Constitution?

    The result: such a patent system is dispelling most future advance technologies. The nation cannot do well by focusing on social media, the internet, and bulky machines (that can be seen by judges). “Physical transformation” might be a right term in 1790. The U.S. judges are still using obsolete concepts in 80s, and even today, when the world is intensively competing in nanotechnologies where speeds, size, and efficiency are critical. The judges need to change their mindset from that in 1790 to that for today.

  • [Avatar for KMH]
    September 6, 2018 09:14 am

    According to PJ Federico, one of the primary drafters of the 1952 Patent Act, 103 was enacted to address confusion resulting from lack of any definition of “invention.” Federico also explained that while 103 did not intend any drastic change in the level of invention, it did intend to relax the strict standards that had developed and to establish a more favorable attitude toward patents. See Federico’s commentary on the new Patent Act.

  • [Avatar for Anon]
    September 6, 2018 09:07 am

    It gets even worse for you, B, when you reflect that “abstract” remains undefined.

    For some unclear reason, you appear to cling to a notion that the Supreme Court actually wrote something meaningful and NOT something that is Void for Vagueness (among other major infirmities).

  • [Avatar for Anon]
    September 6, 2018 09:01 am

    I took your paragraph in context.

    Your context is nothing but a tautology.

    Please read all of my response.

  • [Avatar for B]
    September 6, 2018 08:50 am

    “I see preemption.”

    Kindly read the entire passage, rather than take one paragraph out of context.

    “Does a claim preempt an abstract idea? If not, then the claim recites ‘something more'”

  • [Avatar for Anon]
    September 6, 2018 07:30 am


    You have fallen into the snare of the “scrivined word.”

    What is the difference in your attempt here to distinguish “preemption,” given that what a claim does is preempt?

    To be more clear, what you “expressly” indicate is directly written as:

    Claim an abstract idea.

    And not

    Claim preempts an abstract idea.

    Preemption disappears – the opposite of it being a focal concept.

    All that you are left with – in being expressly direct – is the tautology of “abstact idea.”

    The morass and undefined mess of the Supreme Court remains.

    The scoreboard remains broken. And a broken scoreboard is worse than a broken clock. At least a broken clock is correct twice a day.

  • [Avatar for Anon]
    September 6, 2018 05:19 am


    The CAFC ‘defined “something more” in terms of invention, and so yes it is meaningless. They should have tied the phrase to preemption. Preemption, not invention, is the doctrine justifying the exceptions to s101. Thus spoke Alice Corp.

    I see preemption.

    I do not see your “express” “of an abstract idea”

    Kindly write what you mean.

  • [Avatar for B]
    September 6, 2018 12:36 am

    @ “Sorry B, that’s even worse.

    All claims preempt”

    Obviously, I expressly referred to preemption of an abstract idea. Kindly read what I wrote.

  • [Avatar for Anon]
    September 5, 2018 10:40 pm

    Sorry B, that’s even worse.

    All claims preempt

    That is what claims do.

    Claims preempt that which is their scope.

  • [Avatar for B]
    September 5, 2018 07:00 pm

    “‘Something more’ is undefined muckery – How is anyone able to determine what that means outside of the edicts of the Court?”

    The CAFC ‘defined “something more” in terms of invention, and so yes it is meaningless. They should have tied the phrase to preemption. Preemption, not invention, is the doctrine justifying the exceptions to s101. Thus spoke Alice Corp.

    Does a claim preempt an abstract idea? If not, then the claim recites “something more.”

    So simple only a judge could miss it.

  • [Avatar for Anon]
    September 5, 2018 05:27 pm

    My point is this: the holdings of Alice and Mayo are exceedingly narrow and plausible.

    With all due respect, no, they are not.

    If the claims fail on other grounds, then the proper LEGAL avenues are those other grounds. The proper legal avenue is NOT to gin up some new 101 muckery.

    “Something more” is undefined muckery – How is anyone able to determine what that means outside of the edicts of the Court?

    One does not excuse the mess made by the Court in 101 with such latitude. The larger issue here is that the Court is acting ultra vires and no one cares enough (no one, being the “Royal” government branches) to say “boo.”

  • [Avatar for B]
    September 5, 2018 02:46 pm

    @ Chris W “whereas a dozen patent lawyers in the past had rolled their eyes at me when I made such assertion.”

    FYI, the USPTO begged to SCOTUS to handle Bilski under s103 and maintain the machine or transformation test. I think the SCOTUS was correct, however. There’s nothing in the language of s101 that requires process” to include a machine or transformation. Bilski held an old economic process patent ineligible, but it actually broadened the scope of the word “process” within s101.

    As to Alice Corp., I think it was the correct decision under s101, and Alice Corp. would have been a useful decision but for the word “invention.”

  • [Avatar for B]
    September 5, 2018 02:36 pm

    @ Night Writer “Alice and Mayo are essentially witch cases in that they are just like witch law. In witch law, you don’t have an underlying crime you can pin on the person.”

    With greatest respect, the problem with the claims in Mayo was that they recited absolutely nothing new. Look at the claims carefully. The only point of novelty was the identification of the range as indicators with no instruction as to what to do with those indicators. It’s like claiming gravity, then declaring that Earth’s gravity asserts an acceleration of 9.8m/s*2. No apparent weight was given to those limitation as they did literally nothing.

    Alice was an old economic use that used an old machine (a computer). Now read s100(b). My point is this: the holdings of Alice and Mayo are exceedingly narrow and plausible.

    The Federal Circuit hosed up Alice/Mayo based upon dicta regarding the word “invention.”

    “Something more” is supposed to be a cautiously applied test that addresses preemption by taking into account every non de minimis limitation of a claim, not a flame thrower used to scorch any patent that doesn’t suitably impress a particular judge.

    Assuming that a claim is directed to more than an ideal of itself, “something more” isn’t “invention” unless “invention” means lack of preemption, which s103 addresses for all well-understood, routine and conventional man-made things.
    While s101 and s103 serve different purposes, treating “something more” under s101 more onerously than obviousness under s103 de facto writes out s103 and half of s100(b). The (1) statutory patent laws, (2) congressional intent and (3) Alice Corp.’s command to narrowly construe the exclusionary principle all demand that “invention” under § 101 be less burdensome than obviousness under § 103.

    Given the Supreme Court’s screw up on “invention,” the best and fastest possible outcome is for the CAFC to express “invention” very, very narrowly in terms of preemption and the language in s100, s101.

    Disagree with me if you want, and I invite disagreement. I see our disagreements as issues of language, however.

  • [Avatar for Night Writer]
    Night Writer
    September 5, 2018 10:10 am

    I think that is an article I will write. Witches, Spirits, and Magic, How the Medieval Supreme Court Killed Patents.

    Witches — 101
    Magic — a machine can have new functions without new structure
    Spirits — ethereal forms of information and minds that process in the spirit world

  • [Avatar for Night Writer]
    Night Writer
    September 5, 2018 10:08 am

    Alice and Mayo are essentially witch cases in that they are just like witch law. In witch law, you don’t have an underlying crime you can pin on the person. You can’t say they stole or killed. So you make up this new crime of being a witch and make the test so that it is completely subjective whether the person is a witch or not. It is a form of equity in way, but more like a king or queen saying they don’t like you so you die.

  • [Avatar for Chris Whewell]
    Chris Whewell
    September 5, 2018 09:14 am

    Am glad to see someone else opine that all these distractful issues alleged under 101 could have just as easily been handled under 103. Thanks for the validation, whereas a dozen patent lawyers in the past had rolled their eyes at me when I made such assertion. You’ve hit the issues squarely on the head. Mayo and the other cases have been a huge waste of time, a ruse, which evidences the lack of practitioners and others objecting when they should have objected.

  • [Avatar for JCD]
    September 4, 2018 08:46 pm

    Great article! Inventive concept as the ghost of invention past is an incredibly intriguing premise for eligibility arguments.

  • [Avatar for Martin Schweiger]
    Martin Schweiger
    September 4, 2018 08:26 pm

    great insights!

  • [Avatar for Pro Say]
    Pro Say
    September 4, 2018 01:17 pm

    Thanks Bud.

    Great info, insight, … and §101-rejection traversal args.

  • [Avatar for Mike Jobbs]
    Mike Jobbs
    September 4, 2018 01:04 pm

    @ no one
    Companies like Google should just run and control all patents. America should be run like China or Russia. People should not have any right on something they invented. Its good to see they AIA Act is silencing patent rights. The patent trials and Appeal Board is doing what it was created to do and that is kill patents. Down with the middle class the Bourgeoisie are cleaning things up by buying up the judges and the senators. Money is the most powerful drug on the planet. I own Apple, Goggle and Amazon shares, its important these companies can take the patents they want with out having to pay the inventor, this keeps the shareholders happy as my stocks keep going up. Its all about the stock price.

  • [Avatar for Anon]
    September 4, 2018 09:04 am

    Bravo. A few quibbles,but the larger Gist here [pun intended] is accord with my understanding of history, law and fact.