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« U.S. Drops to 13th in Worldwide Patent Protection According to Study Released by U.S. Chamber of Commerce | Main | Webcast on Managing and Defending Against Patent Infringement Lawsuits »

February 15, 2018


I suspect that everyone in a science field knows that the future of the United States in commerce will depend on software and biotechnology inventions. These inventions are coming in use everywhere in the US and around the world but MPEP guidelines have become dysfunctional in disallowing patents to protect these inventions. The scope of what invention can be patented under 37 CFR 101 needs to have broader boundaries. However the boundaries to Section 101 have narrowed in the last 10 years. A PhD knows that the biotechnology inventions are seldom ordinary occurring biological events. Likewise, a PdD knows that software inventions are not mere mental acts. Improvements beyond what naturally occurs should be patentable. Non-scientists in legal positions of power are making ignorant decisions. If patent litigation lawyers and judges were required to have a science PhD degree, then such legally-profound people would support biotechnology and software patenting instead of destroying it. It has been obvious to young and old alike since WWII that US commerce is lost to off-shore competitors rather easily. US patent laws and courts need to respect the future technology of our modern society.


Correction. I meant 35 USC 101.

Dr. Dresdner,

I agree with you. On the other hand, unlimited eligibility for process inventions that result only in information would create insoluble tension with other Constitutional rights, could never be reasonably examined, and could never be reliably adjudicated.

There are reasonable compromises available, but policy makers and courts will need to be in the mode of compromise. To me, the difference between human use of information and non-human use of information is THE bright line that should be used for eligibility purposes.

Mr. Snyder,

Would you care to outline any details of your "parade of horribles?"

Perhaps a though or two to flesh out each avenue.

An avenue of "insoluble tension with other Constitutional rights" is most likely based on some error of yours as to thinking that perhaps a patent can be infringed outside of its "all elements" rule.

An avenue of "could never be reasonably examined" is most likely not a reasonable approximation vis a vis ANY OTHER type of patent.

An avenue of "could never be reliably adjudicated" appears to be unsupportable (just as vis a vis ANY OTHER type of patent).

It is more likely than not that you are not appreciating exactly what a patent is, what a patent covers, and what would remain safely out of the way of a patent coverage for process inventions (of any sort).

No one (anywhere) is indicating that "process inventions" cover processes totally within the human mind.

Ha. On this very website, two items below, you find this claim, which now moves forward toward inevitable litigation if asserted:

1. A method of identifying and treating a patient undergoing periodic hemodialysis treatments at increased risk for death, comprising:
a) determining at least one clinical or biochemical parameter associated with an increased risk of death of the patient and monitoring said parameter periodically before and/or after the patient is undergoing hemodialysis treatments;
b) determining a significant change in the rate of change of the at least one clinical or biochemical parameter from a retrospective record review of parameter values of the patient determined at prior hemodialysis treatments;
c) identifying the patient as having an increased risk for death because the patient has the significant change in the rate of change of the at least one clinical or biochemical parameter; and
d) treating the patient having an increased risk for death within a sufficient lead time to decrease the patient's risk of death.

This type of "intellectual property" forecloses the basic practice of medicine in relation to dialysis. It's obnoxious to freedom.

As to software patents that can't be examined? There are billions of lines of unpatented code in the world- for which there are no references. It's akin to only providing a copyright after review of the world's entire literature. It won't fly.

If we want to patent new, useful, non-obvious information, we are going to need some court procedures and limiting doctrines that at least narrow the universe and encourage enough patents to create a body of references that can be examined with some practicality.

The parade of horribles is well known in the wider economy. Everyone knows that.

"The parade of horribles is well known in the wider economy. Everyone knows that."


That does not provide the light requested for YOUR positions here.

For example, the claim you wish to becry has an element (treatment) that you appear to have overlooked for any of the avenues of your parade.

As well, your "whine" of "This type of "intellectual property" forecloses the basic practice of medicine in relation to dialysis. It's obnoxious to freedom." is a fallacy, as ALL patents foreclose (and only do so for a limited time) that which is claimed. Whether or not that particular foreclosure is to a "basic practice" is a meaningless assertion on your part, as validity is not in question. Further, innovation is indeed PROMOTED when one is faced with such "but this blocks," as it is in the face of "there is no other way" that the very best of innovation brings forth a completely unforeseen other way. YOUR path is the path of indolence and "shrug" of the shoulder - verily, it is the path of ANTI-patent.

As to your confusion between software PATENT and code for copyright, well, you appear to need to understand the basics of BOTH, as each are geared to separate aspects of protection (as well, your indolence of "but there's no reference" IGNORES the very reason for having these types of protection systems: TO CREATE the references. You confuse what it takes to earn a copyright from what it takes to earn a patent - and do not appear to understand WHY there are those differences.

Please try again (or for the first time).


My focus is on the need for a broadening of the kinds of inventions that can be patented under 35 USC 101 so as to meet the growing need for patents to protect the making, using, selling, and importing of new US biotechnology and software (in hardware use). To be allowed by the USPTO, a US patent claim must be novel and non-obvious and useful. A method claim drawn to an invention practiced for decades cannot now be patented. The pending claim is rejected under 35 USC 102b. For a software invention to be patented, it needs to be used for a purpose and claimed with its used defined in a hardware device. The hardware that is claimed could include a memory chip for storing the software; a processor chip for processing the software in the memory chip and input data from a keyboard; and the processed data could be stored in a memory chip or be sent to computer monitor, or to a mechanical servo. Thus the software with generic hardware components can be found in the marketplace. Software alone is not used.

Dr. Dresdner,

Merely reciting the use of some item of hardware will not confer eligibility to non-statutory elements. The US Supreme Court has been absolutely firm that drafting conventions cannot create eligibility where there is otherwise "abstract ideas".

I'd be interested in your thoughts about this:


Mr. Snyder, you have been drinking the kool-aid of Mr. Heller for too long with your "confer eligibility TO non-statutory elements."

Eligibility is not an "TO element" thing.
Eligibility is to the claim. As a whole.

You keep on wanting to point to a broken scoreboard when the issue is that the scoreboard is broken.

"claim as a whole" is utterly subjective, and merely another shorthand for "I know it when I see it" unless the claim is composed of a single word.

Ironically, just another manipulated scoreboard- which naturally utterly nullifies your beloved "judicial exception to printed matter", which can never be contemplated "as a whole".

Mr. Snyder,

Would you care to explain how "claim as a whole" is "utterly subjective?"

It appears that you are using words that you simply do not understand.

Further, there is no "nullification" of the exception to printed matter that you allude to here. Claims - including elements and pieces that fit exceptions to judicial doctrines - are contemplated "as a whole" all of the time, as is proper. Again, it appears that you are using legal terms without understanding what those terms mean.

Please. Separating printed matter from its substrate means taking claims apart. I'm not going to engage in the tedium of arguing that claim analysis is necessarily a continuum from nearly "whole" to the meaning of individual words.

No one is "separating" anything when the doctrine of printed matter - and its exceptions - are understood in its proper legal sense.

So, "please" and get yourself some legal understanding.

As is, your comments exhibit only the indolence of someone who cannot bother with the understanding required to partake in a meaningful discussion of the legal realm. As to your "not going to engage in the tedium," that translates into your not willing to take that necessary step of understanding. If you are not going to take that necessary step, then please save yourself (and everyone else) the trouble and just don't bother to comment.

Regarding your Feb 18, 2018 statement and question, I provide the following opinion. I believe laws need amending if harmful or dysfunctional. Current boundaries of 35 USC 101 are so. The boundaries of 35 USC 101 should be amended to allow patent claims to well-described, new and nonobvious software inventions useful for electronic processor devices. Now too many issued US patents covering many claims concerning software are being invalidated. Software inventions usefully enable computers to perform innumerable tasks at higher speeds and with more complexity than a human mind or a group of human minds ever can in a timely manner.
Quoting prior decisions by any court is returning to a swamp of narrow minded conventionalism with mislabels, eg “abstract ideas” that are out of date with the need for patent based fostering of software. The lack of technically qualified lawyers in positions on courts explains their isolated views from reality.

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