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March 29, 2017


Hey Kevin,

I understand the effort by the ABA-IPL to render sanity out of the insanity that current 101 jurisprudence is. But this effort is DOA for at least the following reasons. First, it phrases this condition for patenting with the wrong emphasis-the invention or discovery should be patent-eligible if it falls within one of the statutory classes UNLESS it is merely a "law of nature," "natural phenomena," or "abstract idea." Second, the determination of what is patent-eligible should be based upon what is recited IN THE ENTIRE claim without stating what the claim is "directed to," without paraphrasing what it is believed the claim recites or is "directed to," and similar "gisting" that occurs in applying the nonsensical, broken, and non-statutory Mayo/Alice framework. Third, the "preemption" language is superfluous, redundant, confusing, unnecessary and counterproductive as that is already addressed by the "enablement"/"written requirement" of 35 USC 112(b)/112, first paragraph. There may be more issues with the ABA-IPL proposal but those are the "big three" that make this proposal unworkable and unacceptable.

Any attempt to essentially remove the power of judicial review / equitable discretion by statue is going to run up against a separation of powers problem, in the least. Certainly the idea of one being "entitled" to a patent is going to raise eyebrows.

In addition "All practical applications" are unknowable and therefore impossible to adjudicate.

Lastly, the "new" requirement for patentable subject matter is a Constitutional requirement for invention or discovery and will never, ever be excised from the patent law.

Dear Martin: to clear up an easy misunderstanding, the proposal doesn't eliminate the novelty requirement, it limits it exclusively in Section 102 rather than as it is now, also contained in Section 101.

Agreed that the separation of powers is the biggest problem with all the proposals, insofar as the Court will always exercise plenary supervisory power over whether Congress exceeds its powers under Article I. A similar argument was made prior to inclusion of Section 103 in the 1952 Act. The goal is to write the law in a way that these concerns are not implicated.

And of course "all practical applications" is problematic - but "complete" preemption may be better stated as "undue" preemption, provided it can be properly defined.

Thanks for the comments.

Even if the word "new" is removed from Section 101, it is arguably implicit in the words "invents or discovers". It is foreseeably difficult to see how removal of the novelty requirement from Section 101 could be made an attractive proposition to the legislative branch.

Compliance with the four eligible categories is a further issue. The danger is that the debate in the Supreme Court could simply be shifted from the judicial exclusions to statutory compliance, achieving essentially the same results as at present but on the basis of different judicial reasoning, and study of the four categories which has been neglected in recent years in favor of the judicial exclusions reveals that each of them carries ample judicial baggage.

Those who think otherwise are invited to re-read the Mayo decision and consider whether the claimed subject-matter fell as a matter of substance rather than mere outward appearance within the "process" category.

While this whole subject turns on seemingly few words and their meanings, in fact it's an enormously complex set of interrelated problems that has led to the current jurisprudence.

These include:

- the advent of information inventions (i.e. new, useful, and non-obvious inventions that lack any physical structure)

- the Constitutional boundaries of patenting newly discovered scientific facts that are useful without new apparatus or technique (e.g. the presence of fetal DNA in maternal plasma)

- the runaway cost of patent litigation defense (to be merely accused of infringement means a certain, very substantial loss), thus weaponizing patents into instruments of economic destruction asymmetrically favoring patentees.

- The historic anomaly of "process" being relatively unbounded combining with information inventions to foster an explosive growth in the number of patents issues for overlapping subject matter (i.e. "do it on a computer" claims)

- the effect of information inventions on functional claiming statute and doctrine (i.e. the line between aspiration and realization becomes very fuzzy)

- the ubiquity of information processing methods altering concepts/standards of obviousness in combination patents

- the historic dysfunction of the political branches in dealing with complex problems, or any but the most pressing problems at all, leading to increased political decision making being directed to the Judiciary.

Against this background, the solution is not a simple redrafting of Section 101. There is no single solution, but I can think of two or three steps that would help immeasurably.

1) require process patents to have a construed result.

2) if the construed result is some item of information, predicate eligibility on the consumer of the information, not the nature of the information. If consumed by non-human actors, it would be eligible. If not, it would be non-eligible.

3) Include in the construction step a streamlined obviousness inquiry (in lieu of IPR via Article III courts) to identify if there is ANY invention in the claims. If there is, move on to a full 102/103/112 inquiry/trial.

4) Repeal AIA root and branch

5) Make no further legislative interventions until the above court procedures have had time to be adapt and evaluated.

While I do not agree with all that Martin says, he is in my submission correct about the complexity of the problem, the need for a clear and understandable obviousness standard and the cost of litigation in the US (and also here in the UK).

The tendency of legislators is to write progressively over-complex laws, and the USPTO is a huge bureaucracy guided by the MPEP which is itself a document of fearsome length and complexity. When at the end of WWII Woodrow Wilson set out his 14 Points, the French president Clemenceau said: "God, himself, needed only 10."

Simplification and the adoption of a few legal principles on which all can agree would be a way forward. But optimism that it will be found is at present unjustified.

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