“In its current state, S.4734 is radically immature. The most important words dangle undefined, and the language used to define software eligibility effectively excludes most software.”
In U.S. government, setting public policy is the sole and exclusive domain of Congress. The laws they pass effectuate the public policy positions that Congress alone has the power to set.
In law, words are everything. The precise meaning of the words in law determines whether the public policy is implemented as intended by Congress. Altering the meaning of just one word can change the entire public policy set by Congress, even turning the public policy on its head.
Anyone following the debate on patent eligibility can attest to how the Supreme Court’s redefinition of the word “any” in 35 U.S.C. § 101 to have an exception called an “abstract idea” caused a significant public policy change and that change destroyed countless startups, especially those in tech.
Senator Tillis’ Patent Eligibility Restoration Act of 2022, S.4734, wrongly puts the courts in charge of defining public policy because it leaves key words completely undefined.
A Judicially Created Disaster in Patentable Subject Matter
Since the 1952 Patent Act, the words of Section 101 defined subject matter eligibility as “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.”
These words worked exceedingly well for decades. However, in Alice v. CLS Bank (2014) the Supreme Court created an exception to the word “any” that they called an “abstract idea”. But the Court did not define what an abstract idea is, instead leaving us with a purely eye-of-the-beholder test that produces wildly inconsistent results. Today, nobody knows what is patent eligible.
The Federal Circuit refuses to do anything, and instead has issued a scant few opinions which provide contradictory guidance and a plethora of Rule 36 affirmances with no guidance at all. The Supreme Court, having released the abstract idea demon into the patent system, sits on its thumbs refusing dozens of cases from mostly small entities who have been seriously damaged by their errant public policy setting adventure.
Effectively, the courts are telling us that their own preferred public policy is superior to that set by Congress. Damage to our economic engine, technological leadership, and national security be damned.
Go pound sand.
As a result, U.S. startups, especially those with disruptive emerging technologies, lose funding. They are easy prey for predatory infringers in Big Tech. So, investors just put their money in places where abstract ideas do not exist, like China.
Nearly ten years since Alice v. CLS Bank, Congress now wants to reassert their constitutional authority. While that is a good thing, S.4734 makes the mess worse.
What Does ‘Technological’ Mean?
Among the many exceptions to the word “any” being codified in S.4734, it creates an exception to patentable subject matter called “non-technological”.
Paragraph (1)(B)(i): “(1) a person may not obtain a patent for any of the following, if claimed as such: (B) a process that (i) is a non-technological economic, financial, business, social, cultural or artistic process;”.
This, of course, means that only those process inventions that are deemed technological are patentable subject matter.
But how do we know if a process is technological? What does technological mean? That is left undefined.
No Definition of Technological Will Work
The patent system is forward looking. It protects future inventions, not those of the past. In the 1952 Patent Act, Congress used the very broad word any, without exceptions, for this reason.
Any definition of technological constructed today must be able to encompass future inventions of which we know nothing. In 1952, they knew nothing of today’s Artificial Intelligence, for example, but the word any covers it. Back then, things were simpler. Corporations were smaller, not so multinational, and less influential in patent law, so Congress understood that there should not be any restraint that limits individual creativity and freedom to protect all innovation.
We can only proffer a definition based on what we know, and we cannot know what technological things might be invented in the future. It is likely not possible to define technological in a way that ensures the future inventions are patent eligible, since we do not know what they will be.
The big risk here is that any exception to the word any will almost certainly exclude future technologies from patent eligibility. Eliminating a future technology eliminates investment into it, and therefore the industry it creates.
S.4734 does not even pretend to address this problem. Instead, it leaves technological undefined.
S.4734 Forces the Courts to Define Technological
The courts are experts in law – they are not experts in technology.
Nor is legal process suited to define what is or isn’t technological. The court only knows what is presented to it in briefs submitted by parties in the case.
Courts are not required to accept third party amicus briefs. But even if a court agrees to third party amicus briefs, filing one costs tens of thousands of dollars. So only those with access to money will be able to contribute to the court’s public policy debate. A multitude of small inventors and startups will be silenced based on access to money alone.
In the end, the courts will develop a definition based on information provided to it solely by big corporations. The resulting public policy will no doubt disfavor small inventors and startups who were excluded from the debate.
Tillis’ Bill Excludes Most Software Inventions
S.4734 adds a separate exclusion beyond technological:
Paragraph (2)(A)(i): “Notwithstanding paragraph (1)(B)(i), a person may obtain a patent for a claimed invention that is a process described in such provision unless that machine or manufacture is recited in a patent claim without integrating, beyond merely storing and executing, the steps of the process that the machine or manufacture perform.”
All software inventions store and execute code. But that is not the purpose of software. Its purpose is to effect a change in data, and that new data is used in the real world to accomplish something. That may be a process that a machine or manufacture performs, but it may be something entirely absent a machine or manufacture.
Many software inventions only produce new data. Artificial Intelligence is a prime example of why this approach does not work. It, too, stores and executes code. But in many cases, the new data produced is not used by any machine or manufacture at all. Instead, it is displayed in some way so that the new data guides human action or decisions. For example, fighter jet displays provide new data derived from AI algorithms. That new data enables pilots to make split second decisions more accurately. No machine or manufacture is involved beyond storing and executing code.
Some software applications feed new data into other software systems such as enterprise middleware and security applications. There is no machine or manufacture involved.
Under S.4734, most software and artificial intelligence applications are not eligible for patent protection.
Machine learning, a minor form of AI, may be patent eligible under this restriction, but only if the new data is fed directly into a machine or manufacture, and not if it is used by a human operator independent of the machine or manufacture.
Nobody can predict the course of future inventions, and this highly restrictive exclusion will exclude many new technologies from patent protection, including almost all software inventions.
The Bill, as Written, is Radically Unfit to Become Law
S.4734 will attract focused and powerful litigation from Big Tech multinationals attempting to sustain their monopolies. On the other side of Big Tech’s powerful litigation is the moneyless fact that the resulting definitions will propel, or sink, the effectiveness of U.S. technological competition across the globe.
U.S. technology startups will either attract funding, or startups in China and elsewhere will. Where that early-stage funding ends up will determine who leads the world technologically, and thus economically and militarily.
The stakes cannot be higher. That means reforming Section 101 is clearly a public policy position of the United States, which requires clear and defined law that stems from open and free debate from all parties, not just those with money.
Any legislation must be clearly written and well defined by Congress such that the courts cannot redefine key words to change its intent.
In its current state, S.4734 is radically immature. The most important words dangle undefined, and the language used to define software eligibility effectively excludes most software.
S.4734 seems to deliberately gaff Congress’s constitutional requirements onto the courts, who are incapable of performing that task and have no constitutional power to do it anyway. What’s even worse is that these are the same courts that have irresponsibly demonstrated their willingness to muck up the law and their refusal to fix the mess they created time and again.
Yes, Section 101 is broken. Yes, it needs to be fixed. But passing something for the sake of passing it is not only unserious lawmaking, it is an irresponsible, dangerous, and thoughtless venture.
Image Source: Deposit Photos
Image ID: 6496641
Join the Discussion
29 comments so far.
jacekAugust 16, 2022 05:21 pm
Guys Time to learn Chinese. When the US competitiveness goes to the dogs, accelerated by the current US patent policy China is poised no doubt to dominate the world.
william birchardAugust 13, 2022 11:30 pm
US patents are worthless
Sorry but it is true
I lost a lot of money and time
I will never file , Big tech controls the Patent PTAB
THank you for your work
AnonAugust 11, 2022 05:22 pm
One of (not my only, but surely a top one) my qualms with your tactic is that such is exactly what the Efficient Infringer group wants you to do.
(I do “get” your conundrum)
william birchardAugust 11, 2022 01:24 pm
The USPTO is a sham and I ask all inventors NOT to ever file
I lost 4 patents and over 10 K
so not for the USPTO
America is losing out, by the way post all if you like
Greg DeLassusAugust 10, 2022 12:19 pm
Greg DeLassus is an attorney in bio.
There is no doubt that he would be crying foul if tech was saved and bio was pushed under the bus.
Definitely not true. I agree with Gene Quinn that we need to be prepared to take half a loaf when it is on offer. I would say the same if it were the other half of the loaf on offer.
I intend to do all that is possible to kill this legislation… In the end it will not pass.
Fair enough, of course. I doubt that either you or I can do much to affect this bill’s prospects for success. I agree, however, that the odds of it failing are better than those of it passing.
Night WriterAugust 10, 2022 04:47 am
Just as a side note why did “artistic process” get put in there?
What a strange thing to add. So is the point to make AI programs that generate art, music, movies, pictures, and so forth ineligible? Why?
And think about this we are making machines that generate songs and art. That is not what innovation is about? Why would an neural network that generates a song be ineligible but a neural network that is trained to drive is eligible? The technology would be very similar.
This bill stinks to high heaven as if it was written by a bunch of grifters.
Night WriterAugust 10, 2022 04:38 am
Greg>>>The same “huge percentage” of software that would be “wiped out” by this language is already wiped out. The bill does not make anything worse for anyone, but it does make some things better for some. I agree that the bill could be better, but it is still better than the status quo.
This is false by a large measure. This bill adds all sorts of areas that currently are patent eligible. Just an example what does “artistic process” mean? Why are “social” and “cultural” there?
Basically this would mean that any elements of claim that go to how any of the categories are performed would rendered the claim likely ineligible. So, as an example, what about the deep learning AI now that produce songs or art. Well, those are working in ways that are similar to the human mind or could be classified as an “artistic process”. So, something like the neural network being trained to generate melodies based on training of matching the melodies at some feature extraction level with all popular songs. This structure of the the deep learning AI could be said to be an “artistic process” and thus ineligible.
How does that make sense? The ignorance is just stunning. So for those that don’t understand what is going on in AI, basically the way to think about it is that neural networks are learning these complex relationship and functions. And the neural networks that are created then can generate art. But the PTO and courts could easily say that the process whereby the the art produced is an “artistic process”
What sense does that make? A technology that is automating information processing processes, which also may be performed by the human mind, are ineligible? Why? That is the heart of technology and innovation.
>>(B) A process that— (i) is a non-technological economic, financial, business, social, cultural, or artistic process; (ii) is a mental process performed solely in the human mind; or (iii) occurs in nature wholly independent of, and prior to, any human activity.
Paul MorinvilleAugust 9, 2022 09:43 pm
Greg DeLassus is an attorney in bio. There is no doubt that he would be crying foul if tech was saved and bio was pushed under the bus.
Greg, your argument that software fares no worse is wrong. It will add confusion to what is eligible as the courts craft their preferred public policy. Those drafting claims since Alice will likely lose any chance of passing whatever tests they create. This could lob a decade or more off the enforceable life of their patents.
I intend to do all that is possible to kill this legislation, including dealing with its supporters in their home states and districts.
In the end it will not pass. Nobody will benefit except big tech, but software inventions will suffer less damage.
Model 101August 9, 2022 05:52 pm
Greg…I was at the hearings…there certainly were groups bemoaning software patents.
I’m still trying to understand what the problem is.
Why do they want software patents dead?
What is the argument against software patents?
concernedAugust 9, 2022 05:07 pm
“If everyone knows the definition, then why are people complaining that the bill text leaves the term undefined? What is the objection to a lack of definition if everyone already knows the definition? Where a statutory term–just like a claim term–is not defined, it simply takes its colloquial meaning. If everyone already agrees about its colloquial meaning, then why do the authors of the piece above list the lack of formal definition as their principle problem with the bill?”
Sorry, I have been to this dance. I was told my process met the colloquial meaning, not the legal definition. When my attorney asked for the so-called “legal” meaning numerous times, we get no response. The dodge was from the USPTO, its Board, and the Asst. Solicitor.
I know exactly first hand why the authors are afraid. This bill just officially codifies having no rule of law for a process that allows word games to favor the annointed.
No thank you.
Greg DeLassusAugust 9, 2022 03:43 pm
Nobody at the hearings said kill software patents.
Did we watch the same hearings? The Clearing House Payments Company, the High Tech Inventors Alliance, United for Patent Reform, the Internet Association, and the Software and Information Industry Association all sent witnesses to testify that the last bill went too far in restoring eligibility for software patents. John Vandenberg of Klarquist Sparkman even I went so far as to say that the current law equally bars Huawei and other Chinese companies from patenting abstract ideas, while the draft proposal would not. He finished by asserting that “[i] one handed me 10 patents in the computer space, I would do a much better job predicting the 101 challenge than obviousness, claim construction or 112… Alice caused angst but it is not unpredictable.” I disagreed with these witnesses, but they were definitely there and testifying.
If you only remember witnesses arguing for more capacious eligibility for software patents, you are misremembering the hearings. There was quite as much pressure in evidence in those hearings against software as there was for software.
Model 101August 9, 2022 03:10 pm
This is a classic case of criminals running the courthouse.
I can’t believe that after the 2019 Senate hearings….this is what we got. Nobody at the hearings said kill software patents. They agreed that software should be eligible.
Congress and the Senate must have each gotten a bundle for adding that phrase into the text.
Tillis is wrong on this one.
Greg DeLassusAugust 9, 2022 01:48 pm
(B) A process performed on a computer is per se eligible.
For what it is worth, I think that would be a great amendment. If it is politically possible to get that language passed, then the amendment should definitely be offered. If that language is not politically possible, however, then one should not make the perfect to be the enemy of the better.
Greg DeLassusAugust 9, 2022 01:47 pm
Those of us in the AUs that deal with software know what the current definition of “technological” is.
If everyone knows the definition, then why are people complaining that the bill text leaves the term undefined? What is the objection to a lack of definition if everyone already knows the definition? Where a statutory term–just like a claim term–is not defined, it simply takes its colloquial meaning. If everyone already agrees about its colloquial meaning, then why do the authors of the piece above list the lack of formal definition as their principle problem with the bill?
Night WriterAugust 9, 2022 01:44 pm
(B) A process performed on a computer is per se eligible.
There is no need to exclude any process performed by a computer. It is information processing and thus technical. It takes time, energy, and space to perform the operations. It would be like saying that mixing an alloy is not eligible if you use iron as one of the ingredients.
102, 103, and 112 will police the allowed claims just fine.
Greg DeLassusAugust 9, 2022 01:43 pm
[I]nformation processing patents are the majority of patent applications filed (or is it plurality). And yet this amendment… is the dream amendment to end all software patents.
As you have previously noted, the number of U.S.-originating applications shrinks from year to year, so the continued growth of total applications filed come from overseas applications (mostly Chinese applications). Most of those are software application (which, as you say, make up the plurality of apps filed).
If the U.S. were formally to weaken software patent protection, that would disproportionately hurt Chinese applicants. Is that possibly the reason here? Is this, perhaps, a national security measure disguised as a patent reform?
Night WriterAugust 9, 2022 01:39 pm
>>As it happens, the CAFC has had several occasions to interpret “technological” in the context of the CBM statutes. This word already has the beginnings of a common law definition, and (like most common law terms) that definition will become ever more clearly focused as case law builds up. The canvas here is less blank than folks suppose.
Greg please stop this nonsense. Those of us in the AUs that deal with software know what the current definition of “technological” is. And that is that it improves the operation of the hardware of the computer. Something like software that resides in front of memory to perform caches. It can get expanded out a bit but basically that is what it means.
Greg DeLassusAugust 9, 2022 01:32 pm
Senator Tillis’ Patent Eligibility Restoration Act of 2022, S.4734, wrongly puts the courts in charge of defining public policy because it leaves key words completely undefined.
I am not sure that “technological” is as “undefined” as some imagine. “Congress is presumed to be aware of an administrative or judicial interpretation of a statute and to adopt that interpretation when it… adopts a new law incorporating sections of a prior law… That presumption is particularly appropriate [w]here… Congress exhibited both a detailed knowledge of the… judicial interpretation and a willingness to depart from those provisions regarded as undesirable or inappropriate… .” Lorillard v. Pons, 434 U.S. 575, 580 (1978). In other words, insofar as courts have interpreted “technological” in the patent context, Congress can be presumed to incorporate those interpretations when Congress uses the word “technological” in a statutory revision without providing additional definition.
As it happens, the CAFC has had several occasions to interpret “technological” in the context of the CBM statutes. This word already has the beginnings of a common law definition, and (like most common law terms) that definition will become ever more clearly focused as case law builds up. The canvas here is less blank than folks suppose.
Night WriterAugust 9, 2022 01:31 pm
Greg >>The most that can be sensibly said is that the bill helps one tech sector but not another. I agree that it would be better to help both. If the bill can be improved with citizen input, all to the good.
No that is not sensible. What can be said is that this legislation clearly and unambiguously is an attack on software patents/applied math/AI/and all forms of information processing.
This should be called the end patents for all but the computer hardware and pharmaceuticals act.
Night WriterAugust 9, 2022 01:28 pm
Whether or not information processing methods no matter the subject are eligible needs to be explicitly stated in any legislation that could possibly hope to improve the situation.
Plus—information processing takes time, space, and energy to transform information. Physics backs this up that this is a machine processing information. All methods on a computer are technical.
Night WriterAugust 9, 2022 01:25 pm
Paul> believe that passing this legislation is fatal to software and most other tech.
No doubt. Think about that information processing patents are the majority of patent applications filed (or is it plurality). And yet this amendment does not even address this. Rather it using words like “social” and “business” where a patent would only be permitted if it were “technological.”
A fair question is to tell us for each of the 101 precedential cases of the CAFC whether the claims would be eligible or ineligible. What about the last 1,000 claim sets filed in federal court? The last 1,000 claim sets deemed ineligible by the USPTO?
Are claims that are AI to generate a song eligible? “Technological”?
Applied math is apparently out, which wipes out huge areas of innovation.
This is pure trash. It resolves nothing as a judge could expand out “technological” and shrink “social” to permit patents to say Twitter or a judge could wipe out the entire patent portfolio of Twitter.
Same with all AI patents.
Wow. This is the dream amendment to end all software patents.
Greg DeLassusAugust 9, 2022 01:18 pm
I believe that passing this legislation is fatal to software and most other tech.
How so? Patents for software and most other tech are already dead. You cannot kill a corpse.
I agree that this legislation will not make things better for those tech sectors, but I do not see that it would actually make anything worse in practice. Can you point to a software patent that has been successfully enforced post-Bilski that would not be successfully enforceable under this bill?
[S]acrificing tech to save bio is a really stupid thing to do.
I agree that sacrificing tech to save bio would be a bad move, but is that what is happening here? Where is tech “sacrificed.” We are not talking about killing software patents to revive biotech patents. Software patents are already dead, and you cannot kill that which is already dead. There is no “sacrifice” here, at least not in any meaningful sense.
The most that can be sensibly said is that the bill helps one tech sector but not another. I agree that it would be better to help both. If the bill can be improved with citizen input, all to the good.
If, however, it proves politically impossible to improve it, it seems to me that it would still be better to pass this than to pass nothing. Dooming two tech sectors instead of just one helps nobody.
concernedAugust 9, 2022 05:34 am
I have already received a good dose of words that really do not represent their everyday dictionary meaning. This bill looks like second verse, same as the first. In addition, do not bother asking what “technological” means, just add it to the list of other words nobody will define.
Interesting to me, no federal judge understands the full nature of the current patent law per the Patent Commissioner and nobody has a definition of “patent” words (it is a secret), yet 84% of software patents/applications go down in flames.
Fair and balance. NOT!
Paul MorinvilleAugust 8, 2022 08:20 pm
I believe that passing this legislation is fatal to software and most other tech. I agree that it may fix big problems in bio. However, sacrificing tech to save bio is a really stupid thing to do. Another decade of tech startups will be lost to China as we slowly devise case law definitions of technological and that’s if “save and execute” doesn’t kill the tech first. Big Tech will further monopolize. This is the intellectual suicide for tech, but it does help bio.
I am totally against this legislation.
Pro SayAugust 8, 2022 07:41 pm
The best no-years-of-court-fights solution — and indeed the only certain one given SCOTUS’ propensity to usurp the constitutional authority of Congress — is a straightforward one:
Simply remove Section 101.
Sections 102, 103, and 112 will — just as they have for many decades now — prevent that which is not entitled to being patented . . . from being patented.
Do this, and watch American innovation flourish.
Don’t, and continue to watch Communist China flourish.
Greg DeLassusAugust 8, 2022 07:18 pm
Yes, Section 101… needs to be fixed. But passing something for the sake of passing it is… an irresponsible, dangerous, and thoughtless venture.
Is it your position that the new law would be worse than the status quo? If it is possible to improve this bill, I am all in favor of improving it. It seems to me, however, that passing this bill would still be better than what we have right now. At least this bill would put an end to Myriad problems around “isolated” biomolecules, and to “routine and conventional” analysis of dissected claims. It is not perfect, but it is an improvement on the status quo.
TFCFMAugust 8, 2022 04:02 pm
I concur with the authors here, in that any workable definition of subject matter that is eligible for patenting ought to be explicitly stated and literally applicable.
Furthermore, such a definition is not merely a codification of the inherent nature of reality or of the Will of (this or that) God. It is, instead, an essentially arbitrary policy choice. (“For what kind(s) of subject matter shall we permit grant of the bundle of legal rights we call a patent?”) Accordingly, Congress is the only government body which can settle this policy choice. Courts must interpret — and executive agencies must implement — Congress’ choice as faithfully as they can, but the policy choice remains Congress’ alone.
It is therefore critical (as the authors suggest) that Congress:
1) make a clear choice as to what is to be (and is not to be) eligible for patenting and
2) reduce that choice to writing in a clearly-understandable, essentially-literally-applicable standard.
Weasel-words like “technological” merely kick the intellectual can down the epistemiological road and force courts and agencies to try to guess what Congress might have been trying to say and to avoid saying as to eligibility.
Admittedly, precisely wording a definition of what is/is-not patent eligible is a difficult task (one that I have seen no one, myself include, satisfactorily achieve). In the face of so daunting a quest for an “answer,” it seems to me sensible to step back for a moment and consider whether a satisfactory “answer” is so difficult to find because we are asking the wrong “question.”
It seems to me that in many instances in which “eligibility” issues are raised, the underlying concern is that a patentee/applicant is claiming “more than he invented.” This applies to claims to “abstract ideas,” any-composition-which-yields-a-function” claims, and “any-method/command-that-achieves-a-function” claims, even when one or more operative embodiments are disclosed (and especially where none are). At least for this type of “eligibility” objection, it may well be that considerations of written description and enablement may better fit our notions of what ought and ought-not to be patentable than an attempted one-size-fits-all “definition” of eligible subject matter. After all, the mismatch between a limited disclosure and a claim directed to “anything and everything that works to achieve my desired purpose, whether disclosed or not,” seems far clearer than the question of whether the breadth and variety of non-disclosed potential embodiments of a claimed invention renders the claim “abstract.”
Indeed, we might even claim centuries old-precedent for this disclosure-focused analysis of “abstractness,” even if patent rights weren’t quite the focus of the precedential formulation:
“whatsoever a man soweth, that shall he also reap.”
King James Bible, Galatians 6:7.
AnonAugust 8, 2022 03:46 pm
I could not agree more with your thrust here.
The Tillis legislation is nothing more than a massive Trojan Horse.
Not needing a Jedi hand wave, this is not the correction to eligibility law that you are looking for.
Model 101August 8, 2022 01:22 pm
Any means any.
Sounds like Google or Microsoft had their hands on it.