Michel Says He’s Confident Latest Eligibility Bill Will Curb Judicial Expansion of Section 101

“[Judge] Michel was clear that the impact of PERA would be to prevent federal courts from reestablishing judicial exceptions and from importing novelty, obviousness and definiteness or enablement issues into the subject matter eligibility analysis.”

EligibilityOn the evening of July 5, inventor advocacy group US Inventor hosted a webinar to discuss the Patent Eligibility Restoration Act (PERA) recently introduced into the U.S. Senate by Senators Thom Tillis (R-NC) and Chris Coons (D-DE). The featured guest speaker was Retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel, who has been involved in the development of PERA’s draft legislative text and has personally supported PERA as an important step in “reviv[ing] the faltering U.S. innovation system” by abrogating the series of U.S. Supreme Court rulings that greatly expanded judicial exceptions to patent eligibility under 35 U.S.C. § 101.

With more than 60 petitions for certiorari on Section 101 denied by the U.S. Supreme Court since Alice v. CLS Bank (2014), and continuous en banc denials on subject matter eligibility by the U.S. Court of Appeals for the Federal Circuit, Judge Michel told the 250 webinar attendees that a Congressional fix like PERA was much more reliable than trusting courts to fix the current patent eligibility mess. He added that the strategy behind PERA was to draw patent eligibility broadly so that any process would qualify for patent eligibility. While the bill includes a list of certain processes excepted from patent eligibility, such as artistic or cultural processes, further provisions state that such processes will not be excluded if “they cannot be practically performed without the use of a machine or manufacture.”

Recreating Algorithm on Paper Cannot Destroy ‘Machine or Manufacture’ Safe Harbor

Judge Michel noted that PERA is not the only attempt at a legislative fix for Section 101 in recent years, referencing the series of Senate IP Subcommittee hearings during the summer of 2019 spearheaded by then-Chairman Tillis. While Tillis had hoped that those hearings would lead to a viable bill that could pass Congress, Michel told attendees that internal division within the pro-Section 101 reform side of the debate was a big reason why that effort was stymied. Congressional support for clarifying Section 101 is still very low, so while Michel expected Senators Tillis and Coons to “not abandon ship and fight this through,” building support for the bill within D.C. remains a priority.

US Inventor members attending the webinar had concerns over potential unintended consequences of certain terms used within PERA’s statutory language. Ron Katznelson, Founder and President of Bi-Level Technologies, asked whether the safe harbor provisions regarding processes requiring use of a machine or manufacture could be problematic for inventions expressed in algorithms. “If someone can identify on a piece of paper using a pencil what the algorithm is and perform it, it could be argued that the process can be practiced without the use of a machine,” Katznelson contended. He pointed to the Supreme Court’s reasoning in Gottschalk v. Benson (1972), which invalidated patent claims covering a method of converting binary-coded decimal (BCD) numerals into pure binary numbers, as a concern that would remain if patent validity could be undermined by performance of the algorithms outside of computer systems.

Throughout the course of the hour-and-a-half webinar, Judge Michel was adamant that PERA was written so that courts would not be able to invalidate patent claims based on such arguments. While no bill could absolutely prevent potential judicial interpretations of statutory language, Michel was clear that the impact of PERA would be to prevent federal courts from reestablishing judicial exceptions and from importing novelty, obviousness and definiteness or enablement issues into the subject matter eligibility analysis. Michel acknowledged the fear that lawyers might try such arguments was rational given the current state of the law but said that such tactics would not be successful if PERA was enacted.

US Inventor’s Support Would Lead to Positive Momentum for PERA on Capitol Hill

Another concern raised by webinar attendees involved PERA’s discovery provisions, which state that courts can rule on eligibility at any point of an infringement action when there’s no genuine dispute of material fact on eligibility, and that the court may consider discovery limited to those eligibility issues prior to an eligibility ruling. Michel indicated that these provisions would not change the scope of discovery but would rather be a benefit to patent owners by giving them an early opportunity to establish a genuine dispute on eligibility, preserving the issue for trial.

At least one proponent of PERA has noted that several Supreme Court and Federal Circuit patent rulings require “a clear and certain signal from Congress” that new legislation overrules past court decisions. This arguably creates problems with the fact that PERA’s language on the elimination of judicial exceptions is found in the Findings section of the bill and not the statutory language that would be enacted. Judge Michel did not feel that this concern was borne out in how the bill is currently drafted. “The bill is very clear that federal judges are out of the eligibility business and Congress is now telling us what’s in and what’s out,” he said.

Although Michel was confident that hearings on PERA would be conducted by Congressional IP subcommittees before the end of 2023, he acknowledged that he did not expect PERA’s enactment to come any sooner than 2025. This process is made even more protracted by the vehement opposition currently being waged by the High-Tech Inventors Alliance, American Civil Liberties Union and other Big Tech allies, Michel indicated. He noted that US Inventor has grown to become an important voice in the patent eligibility debate and if the group generally were to support PERA, positive momentum toward enactment would likely follow.


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Join the Discussion

31 comments so far.

  • [Avatar for Ostriches]
    August 9, 2023 03:31 pm

    “The Alice decision was a computer decision.”

    My recollection is that the claims subject to review and decided upon in Alice were purely directed to a method and did not even recite a computer or computer implementation.

    That is, the “apply it with a computer” requirement of the method claims was merely subsequently asserted/stipulated by the patentee in order to add a physical component.

    And, because the patentee also conceded/stipulated that the system/apparatus claims were not really any different from the method claims, the system claims, which actually recited specific computer implementation, fell with the “ineligible” method claims.

    This is why the Court said, reciting a method and then merely saying “apply it using a computer” is not enough – the claims at issue never even recited a computer/computers.

    It was really nothing more than the camel getting its nose under the tent with the purely method claims, getting in the tent, and then subsequently sh*tting all over everything since then.

  • [Avatar for concerned]
    July 18, 2023 06:32 am

    An Amici Curiae filed on behalf of my SCOTUS petition quotes Retired Chief Judge Michel.

    The Amici also points out that the USPTO MPEP has over 50 pages trying to describe a judicial exception and the phrase “judicial exception” is used in the MPEP 290 times. Yet the statute has no judicial exceptions, a telling observation in many ways.

    My attorney has asked the USPTO and the lower courts numerous times for “key” definitions and phrases used in the judicial exceptions and no definitions have been provided. This kind of due process seems very troubling to a layperson.

    My appreciation and thank you to U.S Inventor and Eagle Forum Education &Legal Defense Fund for their Amici Curiae.

  • [Avatar for Anon]
    July 17, 2023 03:18 pm

    Jeff Hardin,

    The authority as to patent law is clearly not as you invoke.

    Was your post missing a sarcasm indicator?

  • [Avatar for Anon]
    July 17, 2023 09:08 am


    We’ll bump this to a more current thread (suffice to say that YOUR accusations of my statements being ‘unproven’ are themselves unproven, and while YOU may fully choose not to engage in ‘insults,’ ad hominem — used deftly — is very much a legitimate rhetorical tool).

  • [Avatar for Jeff Hardin]
    Jeff Hardin
    July 14, 2023 08:46 pm

    >> Provide an analysis how Alice may not be patent eligible under this Bill, if that is what you think.

    The bill does not provide that the People’s elected Congress is the sole authority in deciding what promotes the progress of science and useful arts. That comes from Alice. Failing a codification of that by Congress, one may argue that SCOTUS will continue to enforce it’s constitutional authority over whether subject matter promotes said progress, no matter what Congress may or may not say about “judicial exclusions” in PERA, or any other bill.

  • [Avatar for Lab Jedor]
    Lab Jedor
    July 12, 2023 03:32 pm

    Repeating unproven allegations and insults are traits of an ideologue, not of a critical thinker, despite you seem to think of yourself as a superior intellectual. Don’t do it.

    So tell us, what is your alternative? Reject the Bill completely. Amend it? Amend it how? And how did Judge Michel mislead us at the Webinar? Or did he just have his head up his arse? Perhaps he needs to be slapped. Like Kappos, Iancu and O’Malley of C4IP who support the Bill. Why don’t you tell them? You have a great opportunity to do so in a comment on a co-pending IPWatchDog post. I peg you as being a bit too much of a bully in anonymity to do that.

    I keep hoping that rational arguments may evoke a rational discussion. Though by now I am not really doing this to engage with Anon, but for my fellow inventors and in my own interest. So here it goes once more.

    My inventions in cryptography may be considered mathematical in nature. I have dealt with several 101 rejections. This Bill appears to resolve that at the USPTO as well in the Courts, as confirmed by discussions with Judge Michel in the USI seminar. I have some concerns about the named exceptions. But they are outside my own direct concern. To be blunt: my issue with 101 will be resolved I believe. In fact the Bill will reverse the use of computer implemented mathematics as a reason for patent ineligibility.

    Other than some attorneys, I have real patents at stake. I have, at great cost, kept the subject matter alive in pending patent applications. There is no reason for me to accept a solution that is really no solution.

    I am well aware of the Chamberlain argument: give in now on what you don’t own for temporary comfort to lose it all later. That why I was against the previous Tillis solution. Unless good arguments against the current Bill are provided, I am provisionally (you never know what else will come out) for this one.

    Influential thinkers and experts like Judge Michel and Director Iancu are on our side and they are certainly not naïve on this and they are for this Bill.

    In the end, we have to convince a majority in Congress that a) a solution has to be found for patent eligibility of innovation important computer implemented inventions and b) that this Bill resolves the issues around patent eligibility.

    Yelling insults and allegations from the sideline really doesn’t help. Provide an analysis how Alice may not be patent eligible under this Bill, if that is what you think. Don’t come up with the nonsense like the Hopkins potash patent being a business patent. This will not create any traction. Opposing views must be reasoned and rational if we want to have a fruitful advance of our interests.

    An unspoken fear seems to be that SCOTUS, despite the clear intent of Congress may revert back to the “abstract idea” exception. I am not sure that there is any solution for that. I somewhat share the concerns, but Judge Michel was very clear about that: the law is the law as well as its intent and attorneys will spout any nonsense they can come up with. He seems convinced that this Bill will hold up in Court.

    There is an online Member meeting today organized by US Inventor to further discuss the Bill. Please join and participate.

  • [Avatar for Anon]
    July 12, 2023 09:32 am

    Sorry but no:
    Here is a good litmus test. If Big Pharma is concerned about this aspect, we will hear from them

    Big Pharma is NOT a good litmus test – for anything other than Big Pharma looking out ONLY for what they want.

    The Trojan Horse of the ‘revised’ 112 to go along with the ‘revised’ 101 of a few years back should have informed you of that.

    This Bill solves Alice. Not only that, it reverses Flook and Benson.

    You have fallen for that great big wooden horse…

    Wake up son.

    The Hopkins (potash) patent is substantially technical and not substantially “economic, financial, business.”

    Wrong – leastwise in regards to the army of the well-established Efficient Infringer crowd.

    Again – wake up son.

    It is true. I am puzzled why

    LOL – a glimmer of hope for you.

    As for: “It is unbecoming and unnecessary. Don’t do it.

    Do not make the mistake of thinking that everyone who ‘speaks kindly’ is your friend and anyone that ‘speaks roughly’ is your enemy.

    YOU need some sense slapped into you. I DO get that you are mostly in a pro-patent frame of mind, but your position in regards to the Chamberlain ‘good enough’ is in plain error.

  • [Avatar for Lab Jedor]
    Lab Jedor
    July 11, 2023 12:27 pm

    What is being suggested? That every patent application under this Bill that has commercial viability is in essence directed to the exception of doing business and is at risk of being patent ineligible? Here is a good litmus test. If Big Pharma is concerned about this aspect, we will hear from them. Any product or process covered by a patent on diagnostics or treatment is intended to be sold for a LOT OF MONEY, way beyond whatever a computer implemented invention is worth.

    This Bill solves Alice. Not only that, it reverses Flook and Benson. So, it broadens eligibility for mathematical computer implemented inventions. I believe that the Alice patent under this Bill would be patent eligible. Computerized Decision Support Systems will be. It should resolve the eligibility issue of all practical computer implemented inventions.

    The Hopkins (potash) patent is substantially technical and not substantially “economic, financial, business.” The core invention is making potash, not money. In fact, it is well established that the “economic, financial, business” benefits of an invention in general are nihil and if of any value, may only be established to be so years after issuance of a patent. Which means patents that have become valuable to business may also become ineligible years after issuance under this Bill, because while initially technical they then have become substantially “economic, financial, business.”

    Even Alice was not decided because of its business benefits. Alice was deemed ineligible because it allegedly replicated what humans have been doing for a while and now “merely” claimed “doing it on a computer.”

    It is true. I am puzzled why the exceptions are specifically mentioned in the Bill, because they are effectively undone by the computer safe-harbor clause. Perhaps there is a nefarious intent. For now it appears to be an inept residue of previous efforts. A face-saving effort, undone by the safe-harbor clause, left in to create distracting discussions.

    As to Anon’s closing statement. It is unbecoming and unnecessary. Don’t do it.

  • [Avatar for Anon]
    July 10, 2023 06:25 pm

    Lab: really?

    But so far, I have seen no indication or examples of inventions of “a process that is substantially economic, financial, business, social, cultural, or artistic” that would be excluded by this Bill but should be patent eligible.

    Ok, let’s take out the obvious social, cultural, or artistic portion, as BOTH I did not include it, and the well-understood notion of utility for patent law expressly does not include the Fine Arts.

    That let’s us focus on “substantially economic, financial, business.”

    Name me ONE market-valuable patent that cannot be described (by someone wanting to deny innovation protection) as fitting these categories.

    Is not the very first patent (a method of making potash) eminently a business-related — and substantially so — patent? As you may recall (or investigate) this was directly tied to the business fortunes of the inventor.

    I don’t often apply harsh words to those that often have good at heart, but here:

    Pull your head out of your arse.

  • [Avatar for Milton Farmer]
    Milton Farmer
    July 10, 2023 01:18 pm

    My invention is a machine. The reason my invention will be popular is similar to the way that Josh Malone’s invention is popular. There was a knowledge out in the world of backyard fun for all ages that if you could fill dozens of balloons with water very quickly that thousands of people would flock to store shelves to purchase that fun for a few dollars and be able to do it quickly. Nobody could figure out how to do it quickly before Josh Malone.

    My invention is a CVT, a Continuously Variable Transmission. They have been around for about a century. They are efficient and fun to drive if you ever get the chance. The problem no one seems to be able to solve is that they are not durable. Mine is durable and can be used in racing.

    Nowadays, most transmissions are computerized. Even back in 1996 the Honda Civic I purchased with the most popular design of a CVT relied heavily on a computer program to handle the changing of the ratio of the CVT automatically. All you had to do was press the gas pedal. They also gave you a low-range selector on the gear stick. Just a different computer program. Most automatic transmissions have this lower range selector which is just a computer program to rev higher before changing gears if not other changes as well.

    My CVT will function entirely without any computer program. I am not a programmer. My initial prototypes will not have a computer program in them. It is a fact that it doesn’t need a computer program to function, which I designed into it and am very proud of.

    What if after I patent it, someone comes along and writes a computer program to automatically control it? Of course, I will pay someone to write that program but that doesn’t make them the inventor. They will just write the program the way I tell them to. They are my employee.

    So, could someone attempt to invalidate my patent by simply writing a program? Do I have to hire a programmer to do that and include it in the patent before the patent is published?

    That is my concern so far.

  • [Avatar for Lab Jedor]
    Lab Jedor
    July 9, 2023 02:50 pm

    We already had our Munich several times. When America turned its back on its inventors, believing the lies that inventors use patents to take away the Blackberry and other good stuff. Inventors not being the engine of innovation, but trolls doing inconsequential work, earning undeserved patents, using bad patents to exhort money from the brave innovators at Big Tech and small Mom and Pop companies. It all happened quickly, efficiently and acquiesced by non-inventors.

    These Munichs could have been our Waterloo. However, the rise of China, the need for small inventors (not Big Pharma) to create a working vaccine against COVID, a new technology in AI not being developed by the boys and girls of Big Tech but by outsiders, (and I could go on). It all demonstrates what I have been saying forever. Relying strictly on incumbents for innovation is a fool’s errand and historically a dead end.

    I think the correct metaphor for the current situation is that we are starting a process of Island Hopping. It is unlikely if not impossible to restore the benefits of an excellent patent system in one action. We have to address it piecemeal. First restore eligibility, then address the malfunctioning PTAB and finally reverse the misery of eBay.

    I am pretty sure Big Tech realizes a new trend may be emerging in patents. Not in the least because inventors have started to organize and contact Congress. And a Forum like IPWatchDog relentlessly exposes and discusses the malfunctioning of our current patent system. “There is no problem with patent eligibility”, Big Tech maintains. But they also are awfully quiet right now.

    They currently apply another great historical truth attributed to Napoleon: “Never interrupt your enemy when he is making a mistake.” That is why we currently are not hearing from Big Tech on this Bill. Let proponents of patent eligibility fight themselves. Then Big Tech will appear before Congress as the calming and reasonable factor. “Nothing is wrong with patents, we finally have a system that works, don’t shake up a good thing. These inventors want to patent the Heimlich maneuver, they are out of touch with reality.” Peace in Our Time so to speak. I can imagine Darrell Issa saying it.

    Anyway. I share concerns about the exceptions. But so far, I have seen no indication or examples of inventions of “a process that is substantially economic, financial, business, social, cultural, or artistic” that would be excluded by this Bill but should be patent eligible.

  • [Avatar for Anon]
    July 8, 2023 03:24 pm


    There is zero legitimate reason to deny innovation protection to these arts.

    There is zero legitimate reason to deny innovation protection to these arts.

  • [Avatar for Anon]
    July 8, 2023 03:23 pm


    I simply cannot agree with you on many of your points, and I will also point out that I was very vocal even prior to the AIA (when it was being considered as it evolved over a number of years) – both in the blogosphere as well as in direct communication to both my House and Senate representatives.

    Your approach is ill-founded and akin to a Chamberlain ‘peace in our time’ that cannot over come the deficiencies in the poison pill/Trojan Horse phrasing — explicitly – of ““substantially economic, financial, business.”

    As I stated: There is zero legitimate reason to deny innovation protection to these arts.

  • [Avatar for Lab Jedor]
    Lab Jedor
    July 8, 2023 01:25 pm

    It is unclear what inventions will arise that seek patent protection and that are non-technical. I would like to see protection for mathematical inventions. I do not agree that mathematical inventions or discoveries should be in the “public domain” because they are in the mind. Yeah, they are in my mind. If I don’t want to publish them, they stay in the mind. But also, there is about zero support for such patents.

    It is currently uncertain if incorporating mathematical inventions in machine implementation would be acceptable as being statutory patent eligible. It seems to depend on the interpretation or even mood of an Examiner, a PTAB Judge, a District Court, CAFC or SCOTUS. It is even unclear if using a computer would not make an invention patent ineligible in principle at this time.

    This issue seems to be resolved by the current Bill. Benson, Flook, and Alice would be overturned. Not just by stating that as such, but because of the rules of the new Bill when and if enacted. Threats like 102, 103 and 112 arguments are strictly forbidden in determining patent eligibility. A computer-based invention per se is not patent ineligible. True, you need a certain artful drafting of claims and specification. But nothing that is outside the expected skills of a patent agent, patent attorney or pro se prosecutor.

    Judge Michel during the Webinar was confronted with good questions that he answered fairly and convincingly.
    The main takeaways:
    1. this Bill attempts to solve issues created by Alice, nothing else;
    2. the Courts are obligated to follow the law. And the (new) law says that computer implemented inventions are patent eligible. Period, full stop. If we believe that Courts will not follow the law, then further discussion is moot;
    3. Will Patent Eligibility cases end up before SCOTUS? Yes, they will. But the Intent and Wording of the Bill are clear, if an invention can practically only be done on a computer, then it is patent eligible.

    Would I like business methods without technology being patent eligible? For instance, using intangible matter per se, like certain numbers, as a payment method being patent eligible. Perhaps. But currently no country allows such types of patents, and neither do and did we. And I believe that many people who are in favor of computer implemented inventions being patent eligible would be against such a liberal definition of patent eligibility.

    I see this Bill as part of a restoration of some common sense to our patent system. The fact of the matter is that most of us were asleep at the wheel during the emerging anti-patent ideology. A lot of credit as an early warner in things going off the rails in patent land goes to Gene Quinn and IPWatchdog. But many of us did not actively oppose AIA, creation of PTAB/IPR, loss of the 1 year grace period, the idiotic wish to “harmonize” the best patent system in the world with that of foreign countries. That is: no petitions, no calling Representatives and Senators, not visiting Members of Congress, not burning of patents. True, not many of us could have foreseen how bad it was going to be.

    To recoup lost territories after a fight is one of the most difficult things to do. Only after the horrible effects of eBay, Alice and AIA /PTAB was US Inventor getting traction to create a voice for independent inventors, who could previously only find outlet and support at IPWatchDog. And US Inventor finally is starting to become a voice that is listened to and they deserve substantial credit for the Congressional attention to patent matters.

    But we have to be smart where to put our efforts. I currently see no benefit in fighting for non-technology based inventions in business, finance and the arts. Would I consider the Heimlich maneuver an invention? Absolutely. Would I want it to be patent eligible? Perhaps, but probably not. Would I make it part of a fight in resolving Alice “directed to an abstract idea” idiocy? Absolutely not.

  • [Avatar for Anon]
    July 8, 2023 09:31 am


    Absolutely correct.

    Take your pick:

    Poison pill
    Trojan horse

    If Tillis really were serious, he would not be “inviting stakeholder voi€e$,” attempt such things as co-insertion of 112 changes, or here in the latest, include the nonsense of denying innovation protection to the likes of “substantially economic, financial, business.”

    There is zero legitimate reason to deny innovation protection to these arts.

  • [Avatar for B]
    July 7, 2023 03:13 pm

    With greatest respect to Judge Michel, this bill is gagbage – it’s a recipe for disaster

  • [Avatar for PTO-Indentured]
    July 7, 2023 01:22 pm

    Wow, what a ‘dream come true’ free giveaway for China — forever:

    At a time when, and anticipating a delay-to-approval of PERA until 2025 China is filing more patents than all other countries combined — some of the most valuable of all time US industry categories ever are to be swept off the table — forever? Namely, patents in the categories of economic, financial and business. (PLEASE correct me if I am missing something here!).

    So, while China and all other countries other than the US go about filing patents in these game-changing areas — unhampered — US inventions will be allowed for, and ‘101 eligibilities’ will be clarified essentially for US ‘gadgets and gizmos’?

    This would not only be a dream come true for China, it is a safe-harbor guarantee to them AND a clear message to all Big Tech firms that any and all competition — that could hope to require innovation, ecommerce, mcommerce, retail competitiveness of them — will no longer be impinging / and patentable and they can simply go along being the incrementalists they have proven to be — particularly in post-AIA years.

    The fastest growing retail market worldwide is ecommerce — recently subsumed by mcommerce. >70% of all ecommerce revenues are generated by just three multi-vendor marketplaces. And Amazon is in third place BEHIND CHINA COMPANIES in the 1st and 2nd position. 90%+ of all ecommerce purchases will be mobile ones by the 2040s — and the US is just going to give up entirely on IP protected innovations in this on-going multi-trillion dollar arena? Not only losing this revenue, but a whole lot of taxes that could otherwise be gained for the benefit of the US and the weal of its citizens.

  • [Avatar for Yenrab]
    July 7, 2023 11:39 am

    Clause Eight — the last word:
    The patent clause of the US Constitution uses the word “inventors” but not “invention”- but rather “discoveries”. An algorithm that someone has to work hard at to create should certainly be considered eligible as a discovery. Nothing in Sec. 101, before or after the PERA, contradicts that.

  • [Avatar for Night Writer]
    Night Writer
    July 7, 2023 10:37 am

    Just to be clear too, I am an active practitioner. I have right now patent applications that have 101 rejections that are AI applications.

    It is insane.

  • [Avatar for Night Writer]
    Night Writer
    July 7, 2023 10:35 am

    Processing information takes time, space, and energy. These are machines that are processing information. How the information is processed makes a huge difference.

    A machine is sitting there performing a useful function. The machine takes time, space, and energy to perform that useful function. The machine has structure that performs those functions.

    Just insane to say that the machine is ineligible because it is abstract. Alice is horrible law. The abstract exception was meant to be an enablement issue. For example, I claim a machine that performs the same functions as a old machine but uses fewer parts.

    101 should not be an issue for any method performed by a machine. The issue then comes up about claim scope or whether fundamental equations should be able to be claimed. These are really red herrings as these issues never really come up in practice. Show me any claim in the history of the CAFC and Scotus case law that was found invalid under 101 that could not have been found invalid under 103 and meets the fundamental equation or law of science exception.

    I hope Josh’s post was a parody.

  • [Avatar for Night Writer]
    Night Writer
    July 7, 2023 10:05 am

    Anyone who thinks that this latest version of the eligibility legislation is acceptable is delusional.

  • [Avatar for Anon]
    July 7, 2023 08:04 am

    By “want the courts out” one must take that as wanting the Supreme Court out (Marbury dictates that Article III courts cannot be completely excised).

    Direct words are best to this effect:

    Congress hereby strips the Supreme Court of the non-original jurisdiction of hearing patent cases and resets the Court of Appeals Federal Circuit (new members who appreciate the benefits of expansive patent protection).

  • [Avatar for Lab Jedor]
    Lab Jedor
    July 6, 2023 11:35 pm

    The Alice decision was a computer decision. It was held that a financial operation like settlement or reducing settlement risk was well known and was done “manually” and that Alice just “did it on a computer” and thus it was merely directed to the known abstract idea of financial settlement. This was the culmination of anti-business method patents efforts.

    Bio-diagnostics were swept up in this anti-patent movement. To the surprise of Big Pharma. The interest of pharma is, I believe, driving the 101 correction effort. But you cannot adjust 101 without addressing the computer issue. That is why computer implemented methods are so important in this whole discussion.

    What I gathered from Judge Michel’s presentation and observations, the Bill is intended to get the Courts out of the patent eligibility business. That means addressing bio-diagnostics and computer implemented inventions. Because that is where a significant amount of the eligibility pain is.

    The Bill is not intended to penalize or disincentivize other types of inventions. It is to resolve the known 101 issues for computers and diagnostics. It is not to solve PTAB issues or to boost certain technology sectors in view of China strengths.

    This may seem limited in scope, but that is what the intention is, if I understand Judge Michel correctly.

  • [Avatar for mike]
    July 6, 2023 09:01 pm

    @Josh Where do you see in the text that Congress incentivizes only inventions that require a computer? I’m not finding that.

    I think the issue the bill tries to solve is this: Patenting a process without needing an associated “thing” that would remove the patented process from just otherwise being an economic, financial, business, social, cultural process. (Ignoring policy on those categories for now.)

    Upon study of the language, I find that the bill text indicates that:
    – any useful machine, manufacture, or composition of matter is patent eligible, i.e., a useful “thing”.
    – any useful process is patent eligible unless
    — it is claimed as something determined to be a substantially economic, financial, business, social, cultural process. In the case that what is claimed falls into one of those process categories, if the process that is claimed “cannot practically be performed without the use of a machine or manufacture”, that is, it requires a machine/manufacture to function, that is, it needs a “necessary thing to do what is claimed” — notice the word “technological” is absent here on what type of thing that is; it just needs to be a machine/manufacture), then that process is patent eligible.

    So, I think what the bill means is that these types of processes must involve at least some thing that, without it, the process doesn’t function. The bill calls that “thing” a “machine” or a “manufacture”, thus making the definition of those words important. Those terms appear to be broader than the term “computer”.

    >> To me inventions that don’t need a computer are even more advanced. Why would we penalize inventions so amazing that they don’t even need a computer?

    Does “machine or manufacture” restrict this advance?

  • [Avatar for Josh Malone]
    Josh Malone
    July 6, 2023 07:33 pm

    Computers are very old, why would Congress incentivize only inventions that require a computer? To me inventions that don’t need a computer are even more advanced. Why would we penalize inventions so amazing that they don’t even need a computer?

  • [Avatar for Lab Jedor]
    Lab Jedor
    July 6, 2023 07:10 pm

    Thanks US Inventor for arranging this important Webinar and thank you Molly Metz, independent inventor and Member of US Inventor for originally suggesting it. Excellent representation of the webinar by Steve Brachmann.

    As an independent inventor I support this Bill. In my field of Machine Cryptography, as I experienced several times, the threat of Abstract Idea patent ineligibility is real. This Bill resolves that issue. I will require a system that is enabled to provide on an output in electronic form at least 1000 bytes generated by my invention in less than a second. There, done. If you want to do it slower or with pencil and paper, go ahead. Have fun.

    I believe that many, many applications that widely fall under the category of “decision support” including “concerned’s” invention would finally be patent eligible, deservedly so.

    Judge Michel was unambiguous about it: if an invention can only practically be done on a computer, it is patent eligible. No ifs and buts.
    There is a difference between doing math for a thousand years with pencil and paper and doing it on a computer. Doing math generally means doing calculations. A low-pass electronic filter may be achieved by doing simple moving average computations on samples of a signal. The calculations of course are known and can be done with pencil and paper. But you would not have a low-pass signal filter.

    Doing algorithmic operations on a computer as part of an invention will be patent eligible. That was made clear by Judge Michel. He explained that the issue is not if a computation by itself can be done with pencil and paper, but if an invention that applies the computation can be done practically with pencil and paper. Judge Michel mentioned as example closing the financial books each day on a great number of accounts. Such an operation could be done, given enough time, with pencil and paper, but not in a practical sense without computers. An Enterprise Resource Planning system would not work well with pencil and paper. How do we know? We did that for hundreds of years and it was slooooow and inaccurate.

    For now, I support the Bill. Judge Michel asked for the support on this Bill from US Inventor, increasingly recognized as an important representative organization of independent inventors in this debate. I think independent inventors should provisionally give their support. I do. One condition for me is that independent inventors, for instance through a representative organization like US Inventor, should be asked to testify in any Congressional hearing on this Bill where witnesses are invited to appear.

    There are going to be amendments to this Bill and Independent inventors should finally have a voice in the process.

  • [Avatar for mike]
    July 6, 2023 06:20 pm

    I think there are small fixes to the bill than can be done, which would go a long way. The current state of the law is horrible, so let’s implement the right fixes and move quickly if we are to advance the U.S.

    I see an amendment needed to prevent judicial exceptions from creeping back in again. The Findings of the PERA bill say “All judicial exceptions to patent eligibility are eliminated.” It should say “All judicial exceptions to patent eligibility shall be eliminated.” The term “are” is just for the present, but the phrase “shall be” is both present and forward thinking.

    Also, for Paul’s concern on artificial intelligence:

    As I read it, the bill clarifies that the following subject matter is actually eligible under (these would NOT be excluded):

    A. Mathematical formulas that are part of a “useful process, machine, manufacture, or composition of matter”. (Only if the formula is not claimed as part of a “useful process, machine, manufacture, or composition of matter” does the formula not become eligible for a patent.)

    B. A process determined to be “substantially economic, financial, business, social, cultural” as long as the process requires the use of a machine/manufacture for the practicality of the performance of the process. (If those categorical processes are not claimed with such a machine/manufacture dependency, the claim is not eligible for a patent.)

    With this, I think artificial intelligence will remain patent eligible, as artificial intelligence needs to operate on some type of machine/manufacture (and not a human mind) for it to be practical. Otherwise, how else will it be performed? Human intelligence needs a shell, namely, a human mind, to perform in the real world. Likewise, artificial intelligence needs a shell to perform in the real world.

    What matters is how one claims it. So let’s go through the ways AI might be claimed:

    1. If it is claimed as a useful machine, manufacture, or composition of matter, it is automatically eligible. E.g., “A system wherein…”

    2. If it is claimed as a mathematical formula, as long as it is part of a useful machine, manufacture, or composition of matter, it is automatically eligible.

    3. If it is claimed as a process:
    (a) As long as the process is not determined to be substantially economic, financial, business, social, cultural, it is eligible. E.g., Claiming a technological solution to a technological problem should pass muster here.

    (b) If the claimed process is determined to be substantially economic, financial, business, social, cultural, one must ask: “Does the AI process require a machine or manufacture in order to perform practically (i.e., operate/function)?” If yes, it is eligible.

    So, applicants considering claiming a process under 3(b) above should direct claims to functional limitations that, if the computer is stripped away, those functional limitations go away with it. This ensures that a computer is required, thus ensuring eligibility.

    So, for example, applications should direct claims, not to a generic process/method on a computer, but, for example, to operational software or code residing a computer with instructions to perform steps such that the computer is needed for those steps to function. Because if the machine/manufacture is stripped away, either i) the software/code on that computer is gone, so there is nothing left, or ii) the components that do those steps are also gone, so the software/code can’t function. In either case, the computer becomes a requirement for the software to perform, and thus the claim is eligible. (Not legal advice if PERA becomes law.)

  • [Avatar for Paul Morinville]
    Paul Morinville
    July 6, 2023 11:05 am

    In yet another problem, it adds a definition for the word useful under 101. The pundits tell me that is not a problem because the word utility already has a settled definition under 112, and since the words mean the same thing, there should be no issues. I beg to differ. The words are not the same and they exist under different sections. Litigation will develop different meanings driving up costs to get a patent and to defend a patent. And why? If an invention is not useful, it can never be infringed. The only person harmed is the poor sap who invented it and paid for a patent.

  • [Avatar for Paul Morinville]
    Paul Morinville
    July 6, 2023 11:00 am

    There are other problems. It give statutory authorization for 101 challenges in infringement suits. Today, there is no statutory authority, so this is a radical expansion. China does not have a section 101. Why are we restricting our patent system in ways that China does not? Keep in mind while pondering that question that the restriction is on tech inventions like artificial intelligence, 5G, cybersecurity, Enterprise Systems, and many other technologies critical to our national security, and keep in mind that if there is not patent protection for these technologies, investment in them goes down especially at the earliest stages

  • [Avatar for Paul Morinville]
    Paul Morinville
    July 6, 2023 10:54 am

    One major problem with the legislation is simple. If math has been done on paper and pencil for a thousand years, it will not pass the “practically cannot be done without the use of a machine” test. That means artificial intelligence will not be patentable for entire swaths of innovation including anything economic, business, financial, cultural, social or artistic. That sums up just about everything. With China leading in 37 of 44 technologies critical to our national security and economic growth, why would we do this?

  • [Avatar for Model 101]
    Model 101
    July 6, 2023 09:05 am

    The bill should be applied to all patents past, present, and future. It should have retroactive application and it should say so very clearly.

    If not, another thousand patents will die needlessly just like all the others.

    The bill lists the reasons why it should be applied retroactively.

    Just do it!!!!!